2.11.5 Claims are Clear

Date Published

In order to comply with sec 40(3) the claims must be clear.  This does not mandate the use of precise and absolute terms in the claims.  As noted by the courts:

“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use.  The consideration is whether, on any reasonable view, the claim has meaning.  In determining this, the expression in question must be understood in a practical, common sense manner.  Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”

(Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) IPR 331 and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229)

With regard to what constitutes “a workable standard”, consideration should be given to whether a claim provides a reasonable basis by which a third party could, without difficulty, determine whether or not what he proposes to do falls within the scope of the claim.  A claim will lack clarity if the standard specified by the terms of the claim would not permit a third party to ascertain whether an act would fall within the scope of the claim (see Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60).

The claims of a specification are construed according to the rules of construction (see Rules of Construction and Construction of Claims).

Objections of lack of clarity must be taken when it is not possible to reasonably interpret the claims in accordance with the rules of construction.

Examination Practice

Examination provides an opportunity to improve the clarity of claims and thereby reduce the effort required to construe the claims ultimately granted. Thus, although it may be possible to ascribe a meaning to a claim despite the presence of ambiguities and other minor defects, it is frequently desirable, in the interests of customer service, to identify such deficiencies during examination to permit their rectification prior to grant.

In assessing the claims, examination should generally concentrate on the independent claims and those that prima facie add key or significant features and examiners should adopt a practical and common sense approach, avoiding excessive proof-reading of the claims to identify each and every clarity issue.

Terms and Language

Lack of clarity, where present, is often associated with particularly broad terms or language. Where the usage of such broad terms or non-specific language gives rise to a lack of clarity with respect to the scope of the monopoly to which the claim is directed (such as ambiguities, confusion or other difficulties in determining of the scope of the claim) that the examiner cannot readily resolve, an objection should be taken (see Imprecise Terms – e.g. “About”).

Examiners should note however, that the mere presence of such terms or language in a claim does not automatically render a claim unclear and so is not objectionable as such. This is because in some cases the nature of the invention justifies a broad monopoly that can be validly and precisely expressed despite the presence of these terms and/or the claim language. In such cases the meaning of a specific technical term or feature may be broad and encompass a range of embodiments, but the overall scope of the claim remains well defined and can be readily determined by the reader.  

Spelling, Grammar and Formatting Defects

Similarly, clarity objections relating to such matters as spelling errors, poor English or formatting defects are only required where examiners consider that their presence hinders or prevents a reasonable determination of the scope of the claims.  This may occur where, for example:

  • the error becomes significant due to the text affected, such as where a spelling error confuses the nature of a critical feature (e.g. “imino” misspelled “amino”);
  • the nature and/or frequency of the error(s) renders the claims difficult to construe (e.g. successive dependant claims spell the same word differently such that the appendancy is obscured); or
  • the errors adversely affect the readability of the claim(s) to the extent that interpretation is hindered (e.g. misalignment of labels on diagrams included in the claim to the extent that their points of attachment are unclear).

Where examiners become aware of other defects or clarity issues, these should be raised in the interests of providing good customer service, either as an objection or can be identified in a note, as judged most appropriate by the examiner in the specific circumstances of the case.

Where clarity issues are detected that affect many of the claims within a specification (e.g. as a result of poor translation), examiners may raise an objection based on a general observation accompanied by an example.