PCT International Search and Preliminary Examination Guidelines


Appendix to Chapter 5


A5.42  The International Searching and Preliminary Examining Authorities have divergent practices with regard to whether claims, both individually and in their totality, are concise. Either of the alternative guidelines below may be relied upon by an International Authority as appropriate.

A5.42[1]  Claims may be objected to as lacking conciseness when they are unduly multiplied or duplicative. Claims are unduly multiplied where, in view of the nature and scope of the invention, an unreasonable number of claims are presented which are repetitious and multiplied, the net result of which is to confuse rather than to clarify. The claims should not be unduly multiplied so as to obscure the definition of the claimed invention in a maze of confusion. However, if the claims differ from one another and there is no difficulty in understanding the scope of protection, an objection on this basis generally should not be applied. In addition, claims should differ from one another. If claims are presented in the same application that are identical or else are so close in content that they both cover the same thing, despite a slight difference in wording, an objection on the basis of conciseness may be proper. However, such an objection should not be applied if the change in wording results even in a small difference in scope between the two claims. Individual claims may be objected to as lacking conciseness only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.

A5.42[2]  The number of claims must be considered in relation to the nature of the invention the applicant seeks to protect. Undue repetition of words or a multiplicity of claims of a trivial nature which render it unduly burdensome to determine the matter for which protection is sought could be considered as not complying with this requirement. What is or what is not a reasonable number of claims depends on the facts and circumstances of each particular case. Regard also has to be had to the interests of the relevant public. The presentation of claims should not obscure the matter for which protection is sought. Furthermore, the number of alternatives presented within a single claim should not make it unduly burdensome to determine the subject matter for which protection is sought.