6.1.7.2.2 Types of Broad Claims

Date Published

Also in this Chapter:

Key Legislation:

Patent Cooperation Treaty (PCT):

Regulations under the PCT:

PCT ISPE Guidelines:

Related Chapters:

Types of broad claims

Broad claims can be classified into four types, which will be detailed in the following sections:

  • Type I – Many claims in one application

  • Type II – Many possibilities in one claim

  • Type III – Desideratum claims

  • Type IV – Some parametric claims

Type I – Many claims in one application

Most patents typically have 10 to 20 claims, but sometimes applications are filed that have many hundreds, or even thousands, of claims. A large number of claims mean that the search and examination is inevitably compromised.

Type II – Many possibilities in one claim

Examples of this include Markush claims and some cases in the biotechnology field.

A Markush claim or structure is a claim with multiple functionally equivalent chemical entities allowed in one or more parts of the compound. They are mainly used in chemistry.

It is not possible to fully search these types of claims. If the examiner concentrates on the worked examples or even generalised structures based upon the examples, large tracts of claimed matter will go unsearched. These problems are only partially alleviated by electronic structure searching tools because in many cases the search engine will be unable to cope with the generality of the structure the examiner wishes to search.

Further information on Markush claims is provided in Annex AA.

Type III – Desideratum claims

These are claims which set out a desired result without explaining in the claim how the result is achieved. Such claims are often speculative and not commensurate with the contribution the inventor has made to the art.

Type IV – Some parametric claims

Where a parameter is used to define a product, it can be a problem comparing the product with the prior art either because the parameter used is unusual or unusual in the context of the characteristic being measured. Occasionally an applicant will devise an entirely new parameter and use it to define the invention. The product may be known but not described in the prior art in terms of the new parameter. As a result, it makes comparisons with the prior art difficult.

In addition, a claim may define many parameters and/or large ranges for the parameters defined. Claims of this type are similar to Markush claims in the large numbers of possibilities included in the scope of the claim.

General Considerations

It is not possible to properly search or examine claims of these four types, and with claims of types II to IV searching inevitably only covers a small proportion of the huge scope claimed.

See also 6.1.7.2.1 Introduction, Annex H, 6.1.8.4 Search Considerations and 4.4.2.3 Broad Claims.

Examples of search strategies for each of the claim types

Type I claim: Many claims in the one application

Example a) Large number of claims with Article 6 issues

Issues:

  • An application contains 480 claims, of which 38 are independent.

  • There is no clear distinction between the independent claims because of overlapping scope.

  • The claims are drafted in such a way that they are not in compliance with Article 6 and Rule 6.

  • However, there is a reasonable basis in the description that clearly indicates which subject matter might be expected to be claimed (for example from a particular passage).

The search should be based on the subject matter that would be expected to be claimed. Furthermore, the Article 6 and Rule 6. The objection should also have an indication to what degree these objections have been taken into account for the purposes of determining the extent of the search. This extent should be indicated as precisely as possible, for example by a brief written description of the searched subject matter (where possible citing a particular passage).

Example b) Large number of claims with clear lack of unity

An application contains 160 claims, of which 10 claims are independent.

The scope of various independent claims is clear and they can be grouped into 4 separate inventions:

  1. Compounds of formula Ia or pharmaceutically acceptable derivative thereof

    • Pharmaceutical compositions comprising these compounds

    • Methods of treating or preventing disorders characterised by impaired protein trafficking comprising the administration of these compounds

    • Method of producing a protein comprising culturing a cell in the presence of these compounds

  2. Compounds of formula IIa or pharmaceutically acceptable derivative thereof

    • Pharmaceutical compositions comprising these compounds

    • Methods of treating or preventing disorders characterised by impaired protein trafficking comprising the administration of these compounds

    • Method of producing a protein comprising culturing a cell in the presence of these compounds

  3. A method of treating or preventing disorders characterised by impaired protein trafficking comprising the administration of doxorubicin, cycloheximide, hygromycin, novobiocin, aureobasidin or tunicamycin

  4. Methods of identifying compounds that rescue or increase impaired endoplasmic reticulum-mediated transport, enhance protein secretion, rescue impaired protein trafficking, rescue impaired Rab-mediated protein trafficking, inhibit the expression of protein defined therein or inhibit the activity of proteins defined therein

Search strategy

The examiner takes a unity objection and carries out the search based on the invention(s) for which fees have been paid. If no additional fees are paid, the first invention should be searched.

For the first invention, the examiner would search the inventive concept by performing a structure search for formula Ia and combining the search results with keywords (such as protein trafficking, endoplasmic reticulum, lysosomal storage disorder, Huntington’s disease, Ta-Sachs, Hypercholesterolemia, cystic-fibrosis, diabetes etc). If this search provides no citations, the examiner should consider results of the broader search for the compounds of formula Ia per se.

Type II claim: Many possibilities

Example a) Markush Claims

Claim 1:

Compounds of Formula (VII), defined as follows:

Background:

Because of the drafting, a conservative estimate of the number of compounds falling within the scope of this Markush claim was calculated as approximately 27 x 1025. However, the description contains only six examples of compounds of formula (VII).

A search covering the entire scope of claim 1 produces hundreds of citations (too many to cite).

Search strategy:

The initial search should focus on the six exemplary compounds of formula (VII) disclosed in the description. If any of these example compounds are disclosed in the prior art, then because they comprise the core of the alleged invention, the strongest argument for lack of novelty of the claim will be based on the citations pertaining to these compounds. 

The broader aspect of the search should attempt to cover the entire scope of the Markush claim. In the event that this produces such a large number of citations that it is not practicable to cite them all, the examiner should:

  • Exercise professional judgement in selecting citations upon which to base novelty objections.

  • Restrict the scope of the claimed subject matter as much as possible.

  • Notify the applicant (in Box VIII) that the list of citations provided is not an exhaustive one.

In the event that it is not possible to search the entire scope of the Markush claim (due to technical constraints associated with substructure searching), the broader aspect of the search should at least attempt to cover all the general compound classes represented by the examples.

Example b) Reach through claims

Claim 1:

An isolated TKO receptor.

Claim 2:

An isolated compound which modulates the expression or activity of the TKO receptor.

Background

Claim 1 is directed to a receptor the inventors have identified and isolated and ascribed a function to. Claim 2 is a reach through claim, so called because it is attempting to reach through and claim future developments such as drugs which modulate the receptor. For example, receptor may be involved in pain perception or associated with a particular disease. Claim 2 is also very broad as it is not just limited to anything which interacts with the receptor or its gene but also includes any compound that interact with something else to trigger a cascade of events causing the activity or expression of the receptor to be modulated.

Search strategy

The examiner should limit the search to the activity of the compound and make a comment about full description under Article 5. On some occasions, the specification will give a list of known compounds that modulate the activity or expression of the receptor. These will become the citations.

No broader search is possible in this case, and the examiner should indicate this at Box VIII.

Type III Claim: Desideratum

Example a) Optical fibre non-degenerate mode

Claim 1:

An optical fibre adapted in a manner such that it guides an optical signal substantially only in one non-degenerate mode, wherein an electro-magnetic field carrying the optical signal is symmetric with respect to rotation about the fibre axis.

Background:

This claim defines a solution to a well-known problem in the art — to have an optical fibre that guides an optical signal substantially only in one non-degenerate mode. The existing optical fibres all have a common disadvantage: they guide light substantially in one degenerate mode.

Search strategy:

Claim 1 is speculative in nature as it defines the desired result without explaining how the result is achieved. However, it is not unusual that a speculatively claimed result may be genuinely novel and inventive and the ‘claiming by result’ is an attempt to acquire the broadest possible monopoly in a potentially important new field.

The search strategy should be designed to include multiple ‘sub-strategies’ in order to address drafting deficiencies related to the speculative nature of claim 1. The key objective should be to retrieve the closest prior art to the inventive concept focusing on the disclosed embodiments. Multiple sub-strategies should cover different technical aspects of how the relevant possible modes for light propagation in optical fibres can be described:

  • The technical names of modes (single-mode, non-degenerate mode, TE01, TEM01, etc.)

  • The spatial/geometric characteristics of the corresponding electro-magnetic field (symmetric, annular, ring, etc.)

  • The relevant physical parameters of the optical fibre (refractive index, materials for core/cladding, structure of core/cladding, etc.)

No additional search effort is required if:

  • The search yields many highly relevant documents (indicating that the right technical area has been comprehensively covered).

  • None of the relevant documents disclose the features of claim 1.

  • The examiner is confident that claim 1 is most likely to be novel and inventive, in light of the prior art retrieved.

The examiner should address the speculative nature of claim 1 in the Written Opinion using Articles 5 and/or 6.

In addition, the examiner should also exercise professional judgement when dealing with speculative claims in general. This is especially the case in assessing whether a different (broader) interpretation of the defined features is possible. In the above example as all features of claim 1 have a well-defined meaning in the art, therefore this stipulation does not apply.

Example b) Cloned mammal

Claim 1:

A cloned non-human mammal.

Claim 2:

A method of cloning a non-human mammal comprising:

  • fusing a non-human mammalian differentiated cell with an unactivated, enucleated metaphase II arrested oocyte to reconstruct an embryo;

  • maintaining the reconstructed embryo without activation for sufficient time to reprogram the nucleus;

  • activating the reconstructed embryo; and

  • transferring said reconstructed embryo to a non-human host mammal such that the reconstructed embryo develops to term.

Claim 1 is directed to a desired result without defining how the result is achieved. It is claiming the result of a cloned non-human mammal when achieved by any possible method. Such claims may be speculative, particularly when they recite a result desirable in the art that others have been attempting to achieve. Instead, the contribution the invention makes to the art usually lies in the method by which the result is achieved (i.e., claim 2), rather than the result itself (i.e., claim 1).

Search strategy

The initial search strategy should focus on the methods by which the result is achieved. If the search finds any relevant citations against the methods, the citations will also render the result as not novel. If no relevant citations are found, the search should be extended to either methods of achieving the result known to the 3-person team or another technical expert, or to the result itself.

Example c) Isolated catalytic protein

Claim 1:

An isolated protein that catalyzes the biosynthesis of piperitol and/or sesamin.

Claim 2:

The protein of claim 1 comprising the amino acid sequence of SEQ ID NO: 3.

Background

Biosynthesis of chemical compounds can involve a number of steps between a precursor compound and the final compound with different enzymes catalysing the various steps. Claim 1 includes any enzyme in the sesamin biosynthetic pathway. Its broadest possible scope could include enzymes involved in the biosynthesis of the precursor for the seasmin biosynthetic pathway.

What the inventors have identified and isolated is the final enzyme in the pathway which has SEQ ID NO: 3, and which catalyses two reactions: the conversion of pinoresinol to piperitol and the conversion of piperitol to sesamin.

Search strategy

The initial search would focus on the specific enzyme. As there is a sequence, the examiner would perform a sequence search. The examiner could also perform a keyword search to determine if the enzyme had previously been isolated but not sequenced. If the search finds nothing, an expanded search would focus on the whole biosynthetic pathway.

Example d) Air passageway defined by construction

Claim 1:

An air intake for a vehicle being constructed of at least two pieces of metallic material, each of which is formed so as to have a pair of matching edge shapes, the two pieces having such a shape as to define an air passageway there between when joined along their matching edges.

Background:

The claim at its broadest defines a piece of metallic pipe (made of two pieces) or two pipes joined together providing the desired result of defining an air passageway.

However, the invention as described is directed to an air intake made of top and bottom metallic parts where their edges are fused. The intake has a specific shape so it can be fitted over the car’s radiator.

Search strategy:

Claim 1 is speculative in nature as it is unduly wide.

Such broad claims can be expected to have novelty-breaking prior art that can be found quickly. Instead, the examiner should concentrate on searching the preferred embodiment (within the scope of the claim) for the inventive concept. In this case, this would focus on including the specific shape of the air intake (that is, the subject matter that the claims might reasonably be directed after they have been amended per PCT/GL/ISPE/7 at paragraph 15.21).

If the search does not find citations for such embodiments, the examiner could design the search strategy to quickly locate a document undermining the novelty of the claim by consulting internet web pages of Espacenet, USPTO, or Google Patent Search. The search should not be restricted to specific examples.

Type IV claim: Parametric

Example a) Detergent characterised by new index

Claim 1:

A solid detergent composition comprising from 8 to 60 wt % of a surfactant system and having a Grand Compatibility Index of at least 0.5.

Background:

The ‘Grand Compatibility Index’ parameter is unknown in the prior art. The specification describes the index as a function of a large number of other parameters, many of which are not quoted in the prior art. Several pages of the application explain an elaborate testing procedure, using highly specialised laboratory equipment, which when followed, computes the grand compatibility Index of a given detergent.

There are five worked examples of detergent compositions satisfying the parameter in the description.

Search strategy:

Since it is impossible to search the Grand Compatibility Index parameter (as it is unknown in the prior art), the initial search should focus on the disclosed example compositions. If the search finds any of the example compositions in the prior art, the examiner can argue that these would inherently possess the feature of the Grand Compatibility Index parameter.

If the search does not find any prior art pertaining to the examples themselves, the broader aspect of the search should attempt to cover anything that would prima facie possess the feature of the Grand Compatibility Index parameter (such as a search of compounds falling within the same class as those of the examples). For example, if the examples contain compounds that are aryl sulphonates and tetra-alkyl ammonium salts, then the search should at least cover these compound classes in an attempt to uncover compositions that at least satisfy the other identifiable limitations imposed by the claim (such as comprising from 8 to 60 wt % of the composition).

In an effort to render the claim more readily searchable, the examiner may also raise an objection under Article 5 of the PCT.

Example b) Interferometer characterised by beam angles

Claim 1:

An interferometer for writing Bragg gratings comprising:

  • means for splitting a light beam into two coherent beams; and

  • an optical circuit for bringing the coherent beams to interference for writing the Bragg grating in a photosensitive material through induced refractive index changes in the material,

​​​​​​​wherein an angle between the coherent beams after the means for splitting is less than 10°.

Background:

All features of claim 1, except for ‘an angle being less than 10°,’ represent routine technical arrangements in the art. All existing interferometers for writing Bragg gratings include means for splitting a light beam into coherent beams and means for bringing the coherent beams to interference. There is always some angle between the coherent beams after splitting, but its value is not usually specified in technical disclosures in the art (at least, not in the abstract). However, the drawings may provide a qualitative indication on how small or large the angle is.

Search strategy:

Since it is highly unlikely that a specific value of the angle will be disclosed in any abstract of prior art documents, a broad search strategy should be adopted with a set of standard keywords in the field of writing Bragg gratings.

For example, (grating)(s)(write, fabricate, produce, form, manufacture); interfere; etc., followed with angle, split in an attempt to retrieve abstracts where the angle/splitting is mentioned.

The most relevant documents should be then identified by viewing a drawing included in every abstract (almost always in this technical field) and selecting those where the angle between the coherent beams appears to be small, variable, or somewhat important to the invention. For the documents selected in this way, there will be a reasonable probability that an exact value of the angle will be disclosed somewhere in the full specification. Therefore, the examiner will be able to perform the novelty/inventive step determination for claim 1 objectively.

Example c) Composition characterised by physical properties

Claim 1:

An electrohydrodynamic device for generating an aerosol, said device incorporating a composition for creating an aerosol, said composition comprising:

  1. a pharmaceutically active ingredient; and

  2. a carrier material in which said pharmaceutically active ingredient is dissolved, emulsified, or suspended,

said pharmaceutically active ingredient and said carrier material being selected such that the composition has a predetermined range of properties comprising a surface tension of about 10 to 72 milliNewtons/meter, an electrical resistivity of about 10 to 100,000 ohm-meters, and an relative permittivity of about 5 to 500.

Background:

Electrohydrodynamic aerosol generators are well in known in the art of pharmaceutical inhalers and require the carrier to be liquid. The following are commonly understood about the recited parameters:

  • Water has a surface tension of 72 mN/metre.

  • There are few (if any) liquids with a surface tension less than 10 mN/metre.

  • The relative permittivities (dielectric constant) of some liquids typically used as pharmaceutical carriers are: ethanol, 24.3; glycol, 42.2; water, 80.4; and glycerol, 42.5.

  • Materials at the low end of the permittivity range claimed are typically solids (rubber, 7) and materials at the high end are also typically solids (strontium titanate, 310).

Therefore, liquids with relative permittivities of 5 and 500 as claimed can be considered to be rare. Furthermore, the claimed range of resistivity encompasses a very wide range of materials. It follows that the claim effectively includes all possible carrier materials.

Search strategy:

Since it is impossible to search all possible pharmaceutical carrier materials, the initial search should focus on the disclosed example compositions and further restricted to the context of inhalers.

Ethanol is present as a major component in all of the exemplified compositions. Therefore, the initial search should focus on electrohydrodynamic inhalers using ethanol as the carrier. If no citations result, the broader search would focus on electrohydrodynamic inhalers in general.

Amended Reasons

Amended Reason Date Amended

Edited for better readability and accessibility. Edited for consistency with Style Manual. Added subheadings and On this Page menu. Fixed broken links.

Published for testing
Back to top