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2.9.3.4.2A Consideration of Specific Claim Types

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed on or after 15 April 2013.
  • innovation patents with an examination request filed on or after 15 April 2013.
  • innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.9.3.4 Useful (Utility).



Dependent Claims

In general, where the subject matter of an independent claim meets the usefulness requirements, a dependent claim, narrower in scope but to similar subject matter, will also define a useful invention.

An exception to this general rule is where the use specified for the dependent claim differs from that of the independent claim. In this situation, the usefulness of the subject matter of the dependent claim should be considered on its own merits.




Alternatives in a Claim

Where there are alternatives within a claim, everything that falls within the scope of the claim must be useful. This means that each embodiment encompassed by the claim must achieve the promised benefit and the specification must disclose a specific, substantial and credible use for the whole of the subject matter claimed.




Numerical Ranges Within a Claim

When assessing claims containing numerical ranges, examiners should be mindful that everything falling within the scope of a claim must be useful.

The claimed invention should be taken to satisfy this requirement, unless there is good reason for a person skilled in the art to question whether the promised benefit would be achieved across the whole of the claimed range, and/or that the specification discloses a specific, substantial and credible use for the whole of the subject matter claimed.




Broad Claims

When assessing broad claims, examiners should note that everything falling within the scope of a claim must be useful. An objection should be taken where there is good reason for a person skilled in the art to question whether the claimed invention is useful across the full scope of the claim.

For example, if the claimed invention relates to a broad class of chemical compounds and the examples demonstrate that only some of the compounds will produce the desired result, then the claimed invention will not satisfy the requirement that it be useful.


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