6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims

Also in this Chapter:

• 6.1.7.1 Claim Interpretation According to the PCT Guidelines

• 6.1.7.2 Broad Claims

• 6.1.7.3 PCT Articles 5 and 6​​​​​​​

• 6.1.7.5 Procedure for Informal Communication with the Applicant​​​​​​​

Key Legislation:

Patent Cooperation Treaty (PCT):

• Article 5 The Description

• Article 6 The Claims

• Article 15 The International Search

Regulations under the PCT:

• Rule 6.1 Number and Numbering of Claims

PCT ISPE Guidelines:

• Chapter 5 Claims

• Chapter 9 Exclusions from, and Limitations of, International Search and International Preliminary Examination

  • Paragraph 9.25-9.30

  • Paragraph 9.36-9.37

• Chapter 15 The International Search

Related Chapters:

• 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees

• 6.1.7.3 PCT Articles 5 and 6

• 6.1.7.5 Procedure for Informal Communication with the Applicant

Clarity issues related to the scope of the claims

Where clarity issues create significant doubt as to the scope of the claims – and consequently of the required search strategy – examiners should raise them in a similar manner as a lack of descriptive support (see 6.1.7.3 PCT Articles 5 and 6). Where the claims include alternatives, some of which are unclear realisations of the invention, and it is impossible to determine what may reasonably expected to be claimed, examiners may limit the search to only clear realisations of the invention. See Article 6, Article 15(3), Rule 6.1(a), PCT/GL/ISPE/12 at Chapter 5, Chapter 9 paragraphs 9.36-9.37 and Chapter 15.

Clarity issues related to lack of conciseness of the claims

For claims found to lack conciseness – for example, multitudinous claims with overlapping scope – the procedure for broad claims should be applied.

What constitutes an unreasonable number of claims or undue complexity depends on the circumstances of the case. The principle to be applied is that the claims should not be unduly multiplied or duplicative and should not ‘obscure the definition of the claimed invention in a maze of confusion’. The example in paragraph 9.25 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12) indicates that 480 claims (38 independent) is clearly unreasonable.

Extent of search

Chapter 9, paragraphs 9.25 to 9.30 of PCT/GL/ISPE/12 discusses situations where it is appropriate to restrict the search to subject matter expected to be claimed and to raise the matter in the written opinion. This applies where there is significant additional work associated with large and complex claim sets, such as in excess of approximately 100-150 (depending on circumstances), and particularly where there is no clear distinction between independent claims because of overlapping scope.

Where unity of invention is also an issue, examiners should combine the communication with the applicant under MPP 6.1.7.5 Procedure for Informal Communication with the Applicant and 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees.