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
  • para 9.25-9.30
  • para 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

Where clarity issues create significant doubt as to the scope of the claims, and consequently of the required search strategy, they should be raised in a similar manner as a lack of descriptive support as discussed above at 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, the search may be limited to only clear realisations of the invention. See Art. 6, Art. 15(3), Rule 6.1(a), PCT/GL/ISPE/12 at Chapter 5, Chapter 9 para 9.36-9.37 and Chapter 15.

The procedure for broad claims should also be applied to claims found to lack conciseness, for example, multitudinous claims with overlapping scope. What constitutes an unreasonable number of claims or undue complexity depends on the circumstances of the case but 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 para 9.25 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12) indicates that 480 claims (38 independent) is clearly unreasonable.

PCT/GL/ISPE/12 at Chapter 9, para 9.25 to para 9.30 discusses that 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, it is appropriate to restrict the search to subject matter expected to be claimed and to raise the matter in the written opinion. Where unity of invention is also an issue, 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, should be combined.