PCT International Search and Preliminary Examination Guidelines
PART II THE INTERNATIONAL APPLICATION
Chapter 5 Claims
Clear and Complete Disclosure of Claimed Invention
5.45 The subject matter of each claim must be supported by the description and drawings “in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.” The disclosure of the claimed invention is considered sufficiently clear and complete if it provides information which is sufficient to allow the invention to be carried out by a person skilled in the art as of the international filing date, without undue experimentation.
5.46 The disclosure is aimed at a person skilled in the art (see paragraph 13.11). This person is considered, if necessary, to use the general knowledge which would be possessed by such a person to supplement the information contained in the application. The disclosure must be sufficient to carry out the invention on the basis of the knowledge of a person skilled in the art at the time of the international filing date, not at the time of the search and examination. Although a reasonable amount of trial and error is permissible, a person skilled in the art must, on the basis of the disclosure of the claimed invention and the general knowledge, be able to carry out the invention without “undue experimentation.” This is applicable particularly in the field of unexplored technologies.
5.47 Factors to be considered in determining whether undue experimentation is needed to carry out the claimed invention include:
(i) the breadth of the claims;
(ii) the nature of the invention;
(iii) the general knowledge of a person skilled in the art;
(iv) the level of predictability in the art;
(v) the amount of direction provided in the application, including references to prior art; and
(vi) the amount of experimentation required to carry out the claimed invention on the basis of the disclosure.
5.48 The breadth of the claims is relevant to the determination of undue experimentation, since a person skilled in the art must be able to carry out the entire scope of the claimed invention. For example, the applicant is not entitled to claim everything within the scope of the invention if the application only discloses how to carry out part of the claimed invention. However, even in unpredictable arts, it is not necessary to provide examples covering every possible variation within the scope of a claim. Representative examples together with an explanation of how these can be applied to the scope of the claim as a whole will ordinarily be sufficient if a person skilled in the art could carry out the claimed invention without undue experimentation.
5.49 The subject matter to which the claimed invention pertains, is essential to determine the general knowledge of a person skilled in the art and the state of the art. For example, if the selection of the values for various parameters is a matter of routine for a person skilled in the art, such a selection may not be considered as requiring undue experimentation.
5.50 “The amount of direction provided in the application” refers to the information explicitly or implicitly contained in the description, claims and drawings, including working examples and references to other applications or documents. The more that is known in the prior art by a person skilled in the art about the nature of the invention and the more the art is predictable, the less information in the application itself is needed in order to carry out the claimed invention. For example, there is predictability in the art if a person skilled in the art can readily anticipate the effect of a feature of the claimed invention.
5.51 In addition to the time and expenses needed for carrying out the experimentation, the character of the experimentation, for example, whether it constitutes merely routine work or goes beyond such routine, should also be considered.
Sufficiency Commensurate with the Claims
5.52 Most claims are generalizations from one or more particular examples. The extent of generalization permissible is a matter which the examiner must judge in each particular case in the light of the relevant prior art. An appropriate claim is one which is not so broad that it goes beyond the invention nor yet so narrow as to deprive the applicant of a just reward for the disclosure of the invention. Obvious modifications and uses of equivalents to that which the applicant has described should not be questioned. In particular, if it is reasonable to predict that all the variants covered by the claims have the properties or uses the applicant ascribes to them in the description, it is proper for the applicant to draft the claims accordingly.
5.53 A claim in generic form, that is, relating to a whole class, for example, of materials or machines, may be acceptable even if of broad scope, if there is fair support in the description and there is no reason to suppose that the invention cannot be carried out through the whole of the field claimed. Where the information given appears insufficient to enable a person skilled in the art to extend the teaching of the description to parts of the field claimed but not explicitly described by using routine methods of experimentation or analysis, the examiner should invite the applicant to establish, by suitable response, that the invention can in fact be readily applied on the basis of the information given over the whole field claimed or, failing this, to restrict the claim to accord with the description. An example of this might be a claim to a specified method of treating “synthetic resin molding” to obtain certain changes in physical characteristics. If all of the examples described related to thermoplastic resins, and the method was such as to appear inappropriate to thermosetting resins, then limitation of the claims to thermoplastic resins might be necessary to comply with the sufficiency requirement.
Relationship of Claims to Disclosure
5.54 The claimed invention must be fully supported by the description and drawings, thereby showing that the applicant only claims subject matter which he had recognized and described on the international filing date.
5.55 The claims are not consistent and not commensurate with the description and drawings if, after reading the application, the claimed invention is still not at the disposal of a person skilled in the art, because an essential element for the function or operation of the invention is missing from the claim. For example, consider a claim that relates to improved fuel oil compositions which have a given desired property. The description provides support for one way of obtaining fuel oils having this property, which is by the presence of defined amounts of a certain additive. No other ways of obtaining fuel oils having the desired property are disclosed. If the claim makes no mention of the additive, the claim is not fully supported by the description. Another example would consist in the claim not being consistent with the disclosure, for instance, due to contradictions between the elements contained in the claims and the description. One other example would be that, having regard to the description and the drawings, the scope of the claims covers an area which was not recognized by the applicant, for example, mere speculation of possibilities that have not been explored yet.
5.56 A claim may broadly define a feature in terms of its function, even where only one example of the feature has been given in the description, if the person skilled in the art would appreciate other means that could be used for the same function. For example, “terminal position detecting means” in a claim might be supported by a single example comprising a limit switch, it being apparent to the person skilled in the art that, for example, a photoelectric cell or a strain gauge could be used instead. In general, however, if the entire contents of the application are such as to convey the impression that a function is to be carried out in a particular way, with no intimation that alternative means are envisaged, and a claim is formulated in such a way as to embrace other means, or all means, of performing the function, then the claim does not comply with the support requirement. Furthermore, it may not be sufficient if the description merely states in vague terms that other means may be adopted, if it is not reasonably clear what they might be or how they might be used.
5.57 Characterization of a chemical compound solely by its parameters may be appropriate in certain cases (see paragraph 5.36). Characterization of a chemical compound by its parameters is fully supported by the description only when the invention is described by sufficient relevant identifying characteristics which provide evidence that the applicant recognized and described the claimed invention at the time of filing, such as by a description of partial structure, physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between structure and function, or a combination of these characteristics.
5.58 Compliance with the sufficiency requirement of Article 5 and the requirement for support for the claims in the disclosure of Article 6 are determined independently. In some cases, where the claim is too broad to be supported by the description and drawings, the disclosure may also be insufficient to enable a person skilled in the art to carry out the claimed invention. Thus there may be non-compliance with both the requirement concerning the relationship of the claims to the disclosure and the sufficiency requirement. See paragraph 4.12.