Mere Presence in Claim Does Not Ensure Essential

Date Published

Although examiners should initially assume that all features of the independent claims are essential (see Features of a Claim prima facie Essential), the mere presence of a feature in an independent claim is not conclusive proof that it is essential.

In Catnic Components v Hill & Smith Ltd (1982) RPC 183 at page 228 it was stated:

"the fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger* all assume that a claim may include an inessential feature."

* Rodi and Wienenberger v Henry Showell Ltd (1969) RPC 367.