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The Application

Claims shall define the matter for which protection is sought (Section 25(5)(a))

5.41 Section 25(5)(a) requires that the claim or claims shall define the matter for which the applicant seeks protection. As noted above, Rule 19(7) requires that this is done by using the technical features of the invention which may be expressed in structural, functional or mathematical terms.

5.42 The claims should not contain any statements relating, for example, to commercial advantages or other non-technical matter. However, this should be applied narrowly – for example, a definition of a particular property using a comparison with a commercial product would generally not constitute a statement of commercial advantage. For example, a functional definition such as “wherein the antibody binds with pKa greater than (known) antibody X” would not be considered a statement of commercial advantage but rather a reference by which the scope of the claim may be determined.

5.43 However, an objection will arise where the claim does not define any technical features and instead uses statements of a non-technical nature such as:

“My invention will solve world poverty.”

“My invention is worth a million dollars.”

Such claims are most likely to be filed by applicants who are not represented by an attorney.

5.44 This consideration is also related to that of inherent patentability since such claims do not define a technical feature. Where the Examiner considers that the application discloses patentable subject matter but the claims have simply been poorly drafted (such as in the examples above) an objection under Section 25(5)(a) will be appropriate. However, if there is no apparent patentable subject matter in the application then an objection that said application does not relate to an invention may be more relevant.