2.11.2.3.6 Appendancies

In this topic:

Overview

There are three types of claims – independent claims, appended claims and dependent claims.  Independent claims stand on their own and do not refer to any other claim.  Appended claims make explicit reference to one or more other claims.  Dependent claims are a subset of appended claims where all of the features of the parent claim(s) are incorporated into the appended claim.

Examples of commonly occurring appendancies are:

a. As claimed in any of the preceding claims;

b. According to any of the preceding claims;

c. As defined in any of the preceding claims;

d. Of claim 1;

e. According to any one or more of the preceding claims; and

f. As claimed in claims 1-4 of the preceding claims.

Examiners should note that recent court cases on construction do not use the term “dependent” as the basis of construction.  The approach of the courts is to determine the scope of the claim from the words that are used.  “Dependent” is a label that can then be applied after the claims have been construed.

Scope of Appended Claims

There is no requirement under Australian law that appended claims narrow the scope of earlier claims, even though this is often the case (Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 at [47]).  The usual situation is that all the features of the parent claim(s) are included in the appended claim (and thus it is truly a dependent claim), however this does not always apply.  It is therefore necessary to consider what aspects of the parent claim(s) are imported into the appended claim.  In particular, appropriate weight should be given to the preamble or subject clause of the claim.

Claims That Import All Aspects of Parent Claim

Examples of appended claims that import all the aspects of the parent claim (and thus are truly dependent) are:

i. Claim 1. A lifting device comprising A and B.

Claim 2. A lifting device as claimed in claim 1, wherein A is (as further defined).

Claim 2 imports all of the aspects of claim 1, i.e. B is present, as defined in claim 1.

ii. Claim 1. A kit comprising A and B when used in the treatment of disease Y.

Claim 2. The kit of claim 1 further comprising C.

Claim 2 imports all of the aspects of claim 1, i.e. the kit comprising A and B and the “when used” limitation.

iii. Claim 1. Compound of formula X prepared by process A.

Claim 2. Compound of formula X according to claim 1 wherein R = H.

Claim 2 imports all of the aspects of claim 1, i.e. the compound of formula X and the manner in which it was prepared.

In examples i to iii above, claim 2 has the same preamble or subject clause (i.e. lifting device, kit or compound) as the claim to which it is appended.  The use of a common preamble or subject clause is an indication that all of the aspects from the earlier claim are imported, unless a contrary indication is apparent.

Claims That Do Not Import All Aspects of Parent Claim

Conversely, a different preamble or subject clause is likely to (but not invariably) indicate a partial dependency and should be considered carefully. For example, where the claims are of the form:

iv. Claim 1. The use of compound X to treat disorder A.

Claim 2. Compound X of claim 1 wherein …;

claim 2 is considered to be a claim to the compound per se, without any use limitation.  This is made clear by the different preamble or subject clause present in claim 2.

Further examples of appended claims that do not import all of the aspects of the parent claim(s), and thus are not dependent, are:

v. Claims 1 to 3 are directed to a process using a titanium catalyst and claim 4 is appended to any one of claims 1 to 3 but excludes a catalyst (i.e. “A process as claimed in any one of claims 1 to 3, wherein the catalyst is not present”).

vi. The appended claim uses the words "for" or "for use" in relation to an earlier claim. For example, the notional appendancy to claim 1 in "A device for use in the apparatus claimed in claim 1" means no more than that the features of the device have a functional capability consistent with being used in the apparatus of claim 1. In particular, the dependency does not import any of the features of claim 1 as integers of the notionally dependent claim. Further information regarding the construction of “for” and “for use” claims is provided in 2.11.2.3.3 "For Use", "When Used", etc.

vii. Claim 1 consists of features A and B, and the dependent claim is directed to just one of those features per se, for example “Feature B as claimed in claim 1, wherein…..”.

viii. Where an appended claim further defines a feature (X) that is identified as optional in the corresponding parent claim, care should be taken in determining whether or not the appended claim is limited to the inclusion of X. Such determination should take into account the facts of the case and the apparent intent of the appended claim.

When determining optional features, examiners should pay special attention to terms such as “particularly” or “specifically”, as these terms may indicate more specific characterisation of a feature, rather than its optional presence.

Note: Where circumstances iv to viii referred to above occur, novelty issues may also arise and examiners will need to take these into account when formulating any search strategy.

Special Considerations

A situation that is sometimes encountered, particularly in the chemical technologies, is where an appended claim includes examples that do not fall within the scope of the claims to which it is appended. This can arise where  an independent claim is amended to remove some functional groups in order to avoid prior art, but the appended claim still includes specific examples having those functional groups.

In such cases, the appended claim will be taken as broadening the scope of the monopoly to include the additional examples. As with other situations described above, the novelty and inventive step of the additional examples will need to be considered.

Note: A clarity objection should not be taken in such cases, since the scope of the appended claim can be determined.

A simple example is as follows:

In this case, nitromethane does not fall within the scope of the formula defined in parent claim 1. A clarity objection would not be taken, however it would be necessary to consider whether nitromethane is novel and inventive.