About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

PCT International Search and Preliminary Examination Guidelines


Chapter 5 Claims

Inconsistency Between Claims and Description

5.29  Where there is any serious inconsistency between claims and description, amendments to remove this should be invited from the applicant. For example, the description may state, or may imply, that a certain technical feature not mentioned in the claims is essential to the performance of the invention. In such a case, the examiner should invite amendment of the claims to include this feature. However, if the applicant can show convincingly by way of response that it would be clear to a person skilled in the art that the description was incorrect in suggesting that the feature in question was essential, amendment of the description should be invited instead. Another form of inconsistency is that in which the description and drawings include one or more embodiments of the invention which appear to fall outside the subject matter covered by the claims (for example, the claims all specify an electric circuit employing electronic tubes and one of the embodiments employs semiconductors as an alternative). Here again the applicant should be invited to amend the claim or the description and drawings to remove the inconsistency and thus avoid any possible uncertainty which could arise later as to the meaning of the claims. However, inconsistencies which do not cause doubt as to the meaning of the claims may be overlooked.

5.30  General statements in the description which imply that the extent of protection may be expanded in some vague and not precisely defined way should be objected to as not complying with Article 6. In particular, objection should be raised to any statement which refers to the extent of protection being expanded to cover the “spirit” of the invention. Where the claims are directed to a combination of features only, any statement in the description which seems to imply that protection is nevertheless sought not only for the combination as a whole but also for individual features or sub-combinations thereof should be objected to.