PCT International Search and Preliminary Examination Guidelines
PART II THE INTERNATIONAL APPLICATION
Chapter 5 Claims
Categories
Rule 13; Section 206; AI Annex B
5.12 There are two basic kinds of claim, viz., claims to a physical entity (product, apparatus) and claims to an activity (process, use). The first basic kind of claim (“product claim”) includes a substance or composition (for example, chemical compound or a mixture of compounds) as well as any physical entity (for example, object, article, apparatus, machine, or system of cooperating apparatus) which is produced by a person’s technical skill. Examples are “steering mechanism incorporating an automatic feedback circuit...;” “a woven garment comprising ...;” “an insecticide consisting of X, Y, Z;” or “a communications system comprising a plurality of transmitting and receiving stations.” The second basic kind of claim (“process claim”) is applicable to all kinds of activities in which the use of some material product for effecting the process is implied; the activity may be exercised upon material products, upon energy, upon other processes (as in control processes) or upon living things (see, however, paragraphs 9.04 to 9.15 which relate to subjects that may be excluded from international search or preliminary examination).
5.13 It should be noted that claims which are worded differently may, in reality, fall within the same category and have effectively the same scope. For example, a claim referring to a “system” and a claim referring to “apparatus” may both be in the “apparatus” category. It should be further noted that it is permitted to include in the same international application claims of the said different categories provided that they comply with the requirement of Rule 13.1 (see Chapter 10). The examiner should bear in mind that the presence of such different claims may assist an applicant in later obtaining full protection for the invention in all the designated/elected States since infringement of a patent is dealt with by national law. Consequently, while the examiner should draw attention to an unnecessary proliferation of independent claims (see paragraph 5.42), he should not adopt an over-academic or rigid approach to the presence of a number of claims which are differently worded but apparently of similar effect.
5.14 Rule 13.3 states that “the determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.” This means that while the examiner should take exception to an unnecessary proliferation of independent claims, the examiner should not take exception to two or more independent claims in the same category, provided that there is a unifying inventive concept and that the claims as a whole satisfy the requirement of Article 6 that they should be “concise” (see paragraph 5.42). In applying this principle, the examiner should have regard to the remarks made in paragraph 5.13 concerning claims of apparently similar scope. However there are other circumstances where it may not be appropriate to cover the subject matter of an invention by a single independent claim in a particular category, for example, (1) where the invention relates to an improvement in two separate but interrelated articles which may be sold separately, such as an electric plug and socket or transmitter and receiver, (2) where an invention is concerned with electrical bridge-rectifier circuits, it might be necessary to include separate independent claims to a single-phase and to poly-phase arrangements incorporating such circuits since the number of circuits needed per phase is different in the two arrangements, (3) where the invention resides in a group of new chemical compounds and there are a number of processes for the manufacture of such compounds.
Independent and Dependent Claims
5.15 All international applications will contain one or more independent main claims directed to the essential features of the invention. Any such claim may be followed by one or more claims concerning specific forms of that invention. It is evident that any claim relating to a specific form must effectively include also the essential features of the invention, and hence must include all the features of at least one independent claim. The specific forms should be construed broadly as meaning any more specific definition or specifically different embodiments of the invention than that set out in the main claim or claims. It should be noted that, subject to Rule 13.1, it is permitted to include a reasonable number of dependent claims claiming specific forms of the claimed invention in the independent claim, even where the features of any dependent claim could be considered as constituting in themselves an invention.
5.16 Any dependent claim must include a reference to the claim from which it depends, and must be construed as including all the limitations contained in the claim to which it refers. A multiple dependent claim includes all the limitations contained in the particular claim in relation to which it is considered. See the appendix to this chapter and paragraph 9.41 for further guidance with respect to multiple dependent claims.
5.17 All dependent claims, however referred back, should be grouped together to the extent and in the most practical way possible. The arrangement must therefore be one which enables the association of related claims to be readily determined and their meaning in association to be readily construed. The examiner should invite the applicant to submit a suitable amendment if the arrangement of claims is such that it creates obscurity in the definition of the subject matter to be protected.
5.18 A claim, whether independent or dependent, can contain alternatives, provided those alternatives are of a similar nature and can fairly be substituted one for another, and provided also that the number and presentation of alternatives in a single claim does not make the claim obscure or difficult to construe (see also paragraphs 10.09 and 10.17).
5.19 A claim may also contain a reference to another claim even if it is not a dependent claim as defined in Rule 6.4. One example of this is a claim referring to a claim of a different category (for example, “Apparatus for carrying out the process of Claim 1 ...,” or “Process for the manufacture of the product of Claim 1 ...”). Similarly, in a situation like a plug and socket example, a claim to the one part referring to the other cooperating part, for example, “plug for cooperation with the socket of Claim 1 ...,” is not a dependent claim as it does not expressly contain the limitations of the earlier claim from which it depends, rather it only has a functional relationship to that earlier claim.