We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights. Appendancy Issues

Date Published

The manner of appending a claim should only be subject to an objection in regard to matters of substance, and not form. The question is whether the scope of the claim can be determined in accordance with the rules of construction. Accordingly, issues arising from the wording of dependencies should not give rise to an objection, unless they impact on the overall scope of the monopoly.

Traditionally, claims are always appended to a numerically preceding claim. While there is no legislative prohibition against a claim being drafted as appended to a subsequent claim, any such appendancy needs to be carefully examined to ensure that there are no circular loops in the chain of appendancy.

The manner in which a claim is appended will warrant an objection if:

a. the appended claim adds features which are inconsistent or contradictory with the claim it is appended to.  

For example, if claim 11 is directed to "an apparatus as claimed in any one of claims 1 to 10 in which the condenser ...", and none of claims 1 to 10 are directed to apparatus which explicitly includes a condenser, claim 11 lacks clarity and an objection that there is no antecedent for “the condenser” should be taken (see also PERP codes [E50] and [E51]).

However, if claim 11 is appended to claims 1 to 10, some of which specify a condenser and some of which do not, the lack of clarity in appendancy can be resolved by construing claim 11 as appended only to those claims that explicitly include a condenser. Consequently, while claim 11 is unclear in its appendancy, and the resolution of such issues may assist third parties to understand the scope of any subsequent patent, claim 11 is nevertheless capable of sensible construction and an objection, while not inappropriate, need not be taken. A decision whether to take an objection is a matter of judgement of the examiner taking into account the facts of the case, for example whether similar objections have been raised in the corresponding international phase or in FERs.

b. a claim is dependant upon itself, or to a non-existent claim.

The appendancy in such cases is clearly in error. If the claim to which it is intended to be appended is clearly ascertainable, no objection should be taken. However, if the parent claim cannot be reasonably identified, the scope of the claim is indeterminate and an objection should be taken.

c. the appended claim extends beyond the scope of the claim it is appended to and does not include all the features of the invention of that claim.  

For example, if claim 1 is directed to “Product X”, the subject of the claim is X. A subsequent claim of the form of “Machine Y which is able to produce product X according to claim 1 wherein…” has a different subject.  It does not include the features of ‘Product X’ and is not truly appended to claim 1.

Note: Guidelines on the approach to adopt where an appended claim includes examples that do not fall within the scope of the claims to which it is appended are provided in Appendancies.

Back to top