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1824    The Claims [R-08.2012]

PCT Article 6

The Claims

The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.

PCT Rule 6

The Claims

6.1. Number and Numbering of Claims

  • (a) The number of the claims shall be reasonable in consideration of the nature of the invention claimed.
  • (b) If there are several claims, they shall be numbered consecutively in Arabic numerals.
  • (c) The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.

6.2. References to Other Parts of the International Application

  • (a) Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings. In particular, they shall not rely on such references as: “as described in part ... of the description,” or “as illustrated in figure ... of the drawings.”
  • (b) Where the international application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the reference signs shall preferably be placed between parentheses. If inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the purposes of publication by such Office.

6.3. Manner of Claiming

  • (a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.
  • (b) Whenever appropriate, claims shall contain:
    • (i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,
    • (ii) a characterizing portion - preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect - stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.
  • (c) Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.

6.4. Dependent Claims

  • (a) Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17 (2)(b) in the international search report. Failure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used satisfies the national law of that State.
  • (b) Any dependent claim shall be construed as including all the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.
  • (c) All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.

6.5. Utility Models

Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.

PCT Administrative Instruction Section 205

Numbering and Identification of Claims Upon Amendment

  • (a) Amendments to the claims under Article 19 or Article 34 (2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. All the claims appearing on a replacement sheet shall be numbered in Arabic numerals. Where a claim is cancelled, no renumbering of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively.
  • (b) The applicant shall, in the letter referred to in the second and third sentences of Rule 46.5 (a) or in the second and fourth sentences of Rule 66.8 (a), indicate the differences between the claims as filed and the claims as amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing in the international application (it being understood that identical indications concerning several claims may be grouped), whether:
    • (i) the claim is unchanged;
    • (ii) the claim is cancelled;
    • (iii) the claim is new;
    • (iv) the claim replaces one or more claims as filed;
    • (v) the claim is the result of the division of a claim as filed.

37 C.F.R. 1.436  The claims.

The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6 , 9 , 10 and 11 and shall be adhered to. The number of the claims shall be reasonable, considering the nature of the invention claimed.

The claim or claims must “define the matter for which protection is sought.” Claims must be clear and concise. They must be fully supported by the description. PCT Rule 6 contains detailed requirements as to the number and numbering of claims, the extent to which any claim may refer to other parts of the international application, the manner of claiming, and dependent claims. As to the manner of claiming, the claims must, whenever appropriate, be in two distinct parts; namely, the statement of the prior art and the statement of the features for which protection is sought (“the characterizing portion”).

The physical requirements for the claims are the same as those for the description. Note that the claims must commence on a new sheet.

The procedure for rectification of obvious mistakes is explained in MPEP § 1836 . The omission of an entire sheet of the claims cannot be rectified without affecting the international filing date , except in applications filed on or after April 1, 2007, where, if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the original international filing date may be retained if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6 . It is recommended that a request for rectification of obvious mistakes in the claims be made only if the mistake is liable to affect the international search; otherwise, the rectification should be made by amending the claims.

The claims can be amended during the international phase under PCT Article 19 on receipt of the international search report, during international preliminary examination if the applicant has filed a Demand, and during the national phase.

Multiple dependent claims are permitted in international applications before the United States Patent and Trademark Office as an International Searching and International Preliminary Examining Authority or as a Designated or Elected Office, if they are in the alternative only and do not serve as a basis for any other multiple dependent claim ( PCT Rule 6.4(a) , 35 U.S.C. 112 ). The claims, being an element of the application, should start on a new page ( PCT Rule 11.4 ). Page numbers must not be placed in the margins (PCT Rule 11.7 (b)). Line numbers should appear in the right half of the left margin (PCT Rule 11.8 (b)). Paragraph numbers (e.g., paragraph numbers complying with 37 CFR 1.52 (b)(6)) are acceptable provided they are not placed in the margins. See PCT Rule 11.6 (e).

The number of claims shall be reasonable, considering the nature of the invention claimed ( 37 CFR 1.436 ).

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Last Modified: 03/27/2014 10:10:33