The Intellectual Property Office of the Philippines issued in 2022 the Clarity Guidelines (Guidelines) for Patent Applications. The Guidelines aim to assist the Examiners in assessing clarity of claims, as required by the Intellectual Property Code of the Philippines.[1] It is important that the claims be clear and concise in order to ensure clear delineation of the scope of the invention.[2] Since the claims of an invention define the scope of protection, clarity considerations are of utmost importance in patent applications.[3]
Claims Classifications. The Guidelines divide claims into two categories: (i) the physical entity, or (ii) the activity. Claims to physical entity cover substances or compositions, as well as objects, articles, apparatus, machine or apparatus systems.[4] Activity claims cover the use of a product to effect a process, such as those processes that may be effected on material products, energy, other processes or on living things.[5]
The Guidelines further classify claims into independent and dependent claims. An independent claim is one that is able to stand alone and refers to the essential features of the invention without reference to other claims.[6] A dependent claim refers back to an independent claim and includes all the features of the cited claim.[7] Reference to another claim may be made only with respect to certain features of the cited claim, in which case it is not a dependent claim.[8] Reference to more than one other claim shall be in the alternative and cannot be the basis for any other multiple dependent claim.[9]
Clarity Considerations. Clarity considerations such as (i) Support in the Description, (ii) Conciseness, (iii) Broadest Reasonable Interpretation and (iv) Claims Consistency are outlined in the Guidelines.[10] Claims must have full support in the description in order to comply with requirements pertaining to sufficiency of the disclosure.[11] Individual claims and claim sets as a whole must be concise and undue repetition of words should be avoided.[12] Claims are generally interpreted according to their broadest possible meaning, and special meanings must be indicated in the Description.[13] Claims should also be assessed with respect to the meaning of the words in the context of the art.[14] The Claims must be consistent with the Description, including the terminologies used, which may affect the scope of the invention claimed.[15]
Imprecise Terms. Use of imprecise terms in Claims may cause clarity issues. Some of the problematic terms and expressions in terms of clarity of Claims are (i) Relative Terms, (ii) Approximate Terms, (iii) Unusual Parameters, (iv) Optional Features, (v) Alternative Expressions, and (vi) Transitional Terms [Consisting vs. Comprising], are discussed in the Guidelines.[16] Further causes of clarity issues are the (vii) Subject Matter to be Protected, (viii) Product by Process Claims, (ix) Features Defined in Relation to an Unclaimed Apparatus or Device, (x) Functional Features, (xi) Mechanism of Action, (xii) Result to be Achieved, (xiii) Negative Limitation (Disclaimer), (xiv) Trade Name, Reference to the Description and (xv) Reference Sign/s; Text in Brackets or Parenthesis.[17] Illustrative examples of the foregoing issues are provided in the Guidelines.
- Relative Terms– Relative terms such as “big” or “small”, “low” or “high”, “wide” or narrow” that are vague and uncertain are generally not allowed.[18] In cases where words used have no precise meaning, they should be replaced with more precise words used in the disclosure, especially if it refers to an essential feature of the claim.[19] If the term refers to a non-essential feature and there is no more precise term used in the disclosure, the relative term may be retained since its excision will result in broadening of the scope of the application as filed.[20]
- Approximate Terms– Neither are terms tending to approximate values allowed, such as “around”, “about”, ”approximately”, “at most”, “similar” and other similar terms.[21] However, the Examiner is given the discretion to judge depending on the case, prior art, and general knowledge if a certain result can be obtained by a skilled person within a certain degree of tolerance or if it can be unambiguously distinguished from prior art.[22]
- Unusual Parameters– Parameters may be used in defining product claims, if there are no other means to adequately define the product, so long as they are often employed in the particular art. Unusual parameters, or those that are not commonly utilized in the field of the invention may obscure the fact that the product claimed is not novel.[23]
- Optional Features– Terms that pertain to optional features such as “if necessary”, “preferably”, “when desired’, or other similar expressions, must not be used as they may result in uncertainty of the scope of the claims.[24] Hence, such terms must be deleted, whether or not they are attached to essential features of the invention.[25]
- Alternative Expressions– Alternative expressions that offer a choice but without similar characteristics or functions for the choices, will meet clarity objections.[26] In certain cases, use of the term “and/or” may be considered as clear since it could be considered as a combination or an alternative as long as the alternatives share similar characteristics or functions.[27]
- Transitional Terms– Transitional terms that provide additional components or steps included within the scope of the claim, such as “consisting” and “comprising” are assigned specific definitions in patent language.[28] “Comprising” is considered as an open-type transitional term which includes all mentioned features as well as other unnamed features.[29] “Consisting” is considered as a closed-type term which limits the features to those that are specified in the claim.[30]
- Clarity of Protected Subject Matter– There must be clarity, hence legal certainty, as to what falls within the subject matter for which protection is sought. Subject matter of the claim should be directed to either a physical entity or an activity.[31] A claim must be directed to only a single subject matter.[32]
- Product-By-Process Claims– This type of claim should include all necessary process parameters, such as the starting materials and process conditions, in order to generate the product.[33] These type of claims are considered as claims to the product and hence, said product should fulfil the patentability requirements.[34] A product cannot be considered as novel merely through production via a novel process.[35] This type of claim is only acceptable as an exception, if there are no other means to define the product satisfactorily such as reference to its composition, structure or other parameter.[36]
- Feature Defined in Relation to Further Unclaimed Apparatus or Device– If a feature of a claimed apparatus or device is specified with reference to an unclaimed apparatus or device may be acceptable if said feature is standardized such that there is no uncertainty introduced.[37]
- Functional Features– Claims to a physical entity that is defined by its function, are to be construed as claims to the physical entity per se that is suitable for the claimed function.[38] For pharmaceutical and medical inventions, claims defined in terms of its function must be redrafted to the proper medical use format.[39]
- Mechanism of Action– The specific biochemical interaction through which a substance produces its effect in the body may define a medical use claim.[40] Medical use claims may be for first medical use, or for second or further medical use.[41] First medical use claims may be drafted as “product for use in therapy” while second/further medical use may be drafted as “use of a (known) product in the manufacture of a medicament for therapy…”[42] For first medical use claims the mechanism of action may be considered as clear if the product cannot be defined more precisely.[43] For second/further medical use claims, the mechanism of action is not acceptable as a means of defining the invention and hence shall be treated as unclear since for such claims involving a known substance, the patentable feature is the pathological conditions meant to be treated and not the pharmacological effect exhibited by the substance.[44]
- Result to be Achieved– Claims that define the invention or feature by a result to be achieved rather than the entity or process to be achieved are generally not allowed.[45] They may be allowed if there is no other way to define them in more precise terms, provided that the results to be achieved can be verified by appropriate procedures that are specified in the description.[46]
- Negative Limitations or Disclaimers– Claims are usually defined by their positive features, although a claim may also be defined by means of an express statement of the absence of particular elements or features.[47] Such disclaimer may be used only when the claim cannot be defined through its positive features.[48]
- Trade Name– Claims should not be defined using trade names, unless necessary such that the article identified by the trade name is generally recognized as having a precise meaning.[49]
- Reference to the Description– Reference to the description should not be allowed in the claims, unless absolutely necessary such as when the invention involves a peculiar shape that has been illustrated in the drawings but which could not be sufficiently described in words or formulae.[50]
Reference Signs– Reference signs are used in a drawing to identify a particular feature, usually by a letter or numeral.[51] Brackets or parentheses should be used after the corresponding feature in a claim in order to more easily understand the claim.[52] Other texts aside from the foregoing are not considered as reference signs and are not allowed in claims.[53]
The Guidelines provide multiple examples to illustrate and explain the foregoing clarity considerations.
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This article is intended for reportorial and informational purposes only and should not be considered as legal advice.
For any questions or legal concerns regarding Patent Applications, you may contact the author:
- SOPHIA EDITHA C. CRUZ-ABRENICA
Senior Counsel, Villaraza & Angangco
mc.abrenica@thefirmva.com
[1] Guidelines, p. 2.
[2] Id.
[3] Guidelines, p. 6.
[4] Guidelines, p. 3.
[5] Id.
[6] Guidelines, p. 4.
[7] Id.
[8] Guidelines, p. 5.
[9] Id.
[10] Guidelines, p. 7-8.
[11] Guidelines, p. 7.
[12] Id.
[13] Guidelines, p. 8.
[14] Id.
[15] Id.
[16] Guidelines, p. 10-22.
[17] Guidelines, p. 22-34.
[18] Guidelines, p. 10.
[19] Id.
[20] Id.
[21] Guidelines, p. 22.
[22] Id.
[23] Guidelines, p. 14-15.
[24] Guidelines, p. 16.
[25] Id.
[26] Guidelines, p. 19.
[27] Id.
[28] Guidelines, p. 20-21.
[29] Id.
[30] Guidelines, p. 21.
[31] Guidelines, p. 22.
[32] Guidelines, p. 23.
[33] Id.
[34] Id.
[35] Id.
[36] Guidelines, p 23-24.
[37] Guidelines, p. 24.
[38] Guidelines, p. 25.
[39] Id.
[40] Guidelines, p. 28.
[41] Id.
[42] Id.
[43] Id.
[44] Id.
[45] Guidelines, p. 29.
[46] Id.
[47] Guidelines, p. 30.
[48] Id.
[49] Guidelines, p. 31.
[50] Guidelines, p. 32.
[51] Guidelines, p. 33.
[52] Id.
[53] Id.