Claims as a Disclosure

Date Published

Where a citation is a patent specification, the claims of that specification may provide a relevant disclosure, particularly if a claim includes matter that is not in the description.

However, where the claim is in conflict or inconsistent with the description, the claim does not constitute a disclosure of that conflicting subject matter (see Monsanto Co's Application (1965) AOJP 3362).

Furthermore, when considering the claims of a citation, examiners must be careful to distinguish between the scope of those claims, and the disclosure of the citation. In particular, the fact that something falls within the scope of a claim of a citation does not in itself mean that matter has been disclosed in the citation.

Thus, when considering patent specifications as citations, examiners should rely upon the claims of the citation only as an indication of the disclosures in the citation. A proper determination of the disclosure of the citation requires consideration of the specification as a whole (see Pugh v Riley Cycle Company Ld. (1914) 31 RPC 266 at 277).