2.11.6 Claims are Succinct

Date Published

Lack of succinctness arises if:

  • an individual claim is considered unnecessarily lengthy; or
  • the statement of claims as a whole is considered unnecessarily lengthy due to the repetitious nature of the claims.

The number of claims is irrelevant to the question of succinctness.  

In considering a lack of succinctness objection, examiners should have regard to the fact that drafters will have varying drafting styles.  In particular, there can be significant differences arising from the various jurisdictions in which the applicant may be seeking protection. For example, in the US, multiply-dependant claims are not allowed to be dependant upon other multiply-dependant claims, which can result in an increase in the number of claims. Objections of lack of succinctness should not be based on such issues.

Case Law

The principle judicial authority on succinctness is Bancroft's Application (1906) 23 RPC 89. In that case there were 23 claims, all independent, claiming various combinations of features.

“We by no means desire to lay it down that the mere number of claims amounts to {lack of succinctness}, for a specification may be such that there are a great many claims, separate in their nature, which are justifiably made … . So long as the statement of each claim is in itself clear and succinct, and so long as there is an absence of repetition in the separate claims, we do not think that {a great many claims gives rise to lack of succinctness}”..

The only Australian judicial precedent on the meaning or scope of the term ‘succinct’ as used in sec 40 is in the lower court judgement in Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [ 2001] FCA 1877:

“I accept that it takes patience, time and effort to unravel all of the claims of the Patent. Subject to the expenditure of that time and effort, there is no alleged ambiguity in the claims. The problem is not with prolixity, but with attempted compression, and the multitude of claims. That, however, falls short of establishing that the claim or claims are not clear and succinct."

The issue has arisen in hearings before the Commissioner, as follows:

  • “The application suffers from ‘an overdose of claims’. The statement of claims is ‘eminently perplexing to the public.” Nomad v Heyring [1992] APO 15.
  • “Inclusion of an inessential feature does not make a claim ‘non-succinct’ ” Tropical Export Nursery v Shade Span Industry [1994] APO 62.
  • “It is the right of an applicant to draft his claims so as to protect every aspect of the invention that he has disclosed.  This can lead to a large number of claims, and potentially even a large number of independent claims.  Whether such a drafting style results in claims that are not clear and succinct is a question of degree, that can only be decided by having regard to the specific claims and the specific description, rather than simply counting the number of claims.” American National Can v Trigon [1996] APO 23.
  • “… it has long been accepted that claims will not be clear and succinct if their repetitious nature is such the difference in scope between two or more claims is not readily apparent, (see Bancroft's Application, (1906) 23 RPC 89). This situation rarely arises in practice but I think the present application is one such case because of the large number of different combinations of features claimed and the wide variety and ambiguity of the different terminology in the claims that is said to define the same key features. … Consequently I find, in addition to the matters of clarity discussed above, that the claims as a whole are not clear and succinct.” Sabre v Amadeus Global Travel [2004] APO 21.

It is noteworthy that decisions almost always refer to succinctness together with clarity, indicating that succinctness may best be considered as a particular form of clarity.