4.4.2.3 Broad Claims

Also in this Chapter:

• 4.4.2.1 Independent Claims
• 4.4.2.2 Dependent Claims
• ​​​​​​​4.4.2.4 Reserving the Search
• 4.4.2.5 Controlled Language

Related Chapters:

• 3.3.3 Reserving Opinion and Restricting Search
• 6.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6
• 6.1.7.2 Broad Claims
• 6.1.7.2.2 Types of Broad Claims
• 6.1.19 Annex H – Searching Broad Claim

• 6.1.8.4 Search Considerations.

When searching broad claims the following steps should generally be followed:

• An initial search of the general inventive concept with reference to the examples and description should be carried out. The search should not be restricted to specific examples unless no other search is possible;
• If no relevant citations are retrieved, further search(es) of embodiments within the scope of the claims should be performed. The examiner, in consultation with the 3 person team or another technical expert, should attempt to identify potentially relevant subject matter that can be accessed quickly;
• If additional searching fails to quickly retrieve any relevant prior art, the 3 person team should assess whether further searching is useful; and
• Any additional inventive step searches are then considered by the 3 person team (as outlined below).

Note that the initial meeting of the 3 person team should attempt to anticipate alternative search strategies in order to deal with all aspects of the search at the one time. Inventive step searching should only be considered where the initial search fails to uncover any citations disclosing one or more features of a claim.

Where a claim will clearly have to be narrowed in scope to overcome objections other than lack of novelty and inventive/innovative step, it is appropriate that examiners restrict the extent of the search to those areas which they reasonably expect to be claimed after amendment to overcome the other objections.

For national phase applications: where the extent of the report is restricted in some manner, a statement to this effect must be included in the report. The statement should include the reasons for restricting the report, together with the advice that opinion in respect of those matters not covered by the report is reserved (See 3.3.3 Reserving Opinion and Restricting Search).

For PCT applications: where the extent of the search is restricted on the basis of corresponding Article 5/6 objections, comment in Box VIII of the ISO may be necessary (See 6.1.7.2 Broad Claims).

See also:

• 6.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6.
• 6.1.7.2.2 Types of Broad Claims
• 6.1.19 Annex H – Searching Broad Claim
  

• 6.1.8.4 Search Considerations.