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Claims shall be supported by description (Section 25(5)(c))

5.76 Section 25(5)(c) states that the claim or claims shall be supported by the description. In practice, this means that:

(a) the scope of the claims should be justified by the disclosure provided by the description, drawings and sequence listing, and in particular “should not extend to subject matter which, after reading the description, would still not be at the disposal of the person skilled in the art” (Generics (UK) Ltd v Lundbeck A/S [2009] RPC 13 at [36]; and

(b) the specification must provide a disclosure that enables the invention to be performed across the breadth of the claims. (Asahi Kasei Kogyo KK’s Application [1991] RPC 485).

5.77 Most claims will represent a generalisation of the inventive concept. The extent to which that generalisation is supported will vary from case to case. Thus, as stated by Lord Hoffmann in Biogen Inc v Medeva Plc [1996] UKHL 18:

“… if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect: see May & Baker Ltd v. Boots Pure Drug Co Ltd (1950) 67 RPC 23, 50. On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them.”

5.78 Consistent with this approach, an applicant may claim more broadly than the specific embodiments set out in the description, including obvious variants, technical equivalents and the like. One way of approaching this is whether the skilled person would predict that such variants and equivalents would have the same properties as those specifically described. Notably this may differ between where the invention is in a well-worked art and where the invention is in a new field. In some cases the scope of terms in a well-worked art may be narrower as there is more certainty as to the types of variants that may be substituted for certain features. In a newer field, it may be less predictable so more flexibility may be given to the drafting. However, if there is insufficient enablement across the full scope then an objection of lack of support may arise.

5.79 Where the invention relates to a “principle of general application” the claims may be in correspondingly broad terms. The applicant need not show that they have proved its application in every individual instance. On one hand, if the claims include a number of discrete methods or products, the applicant must enable the invention to be performed in respect of each of them. On the other hand, inventions consisting of a single embodiment, such as a single chemical compound, will generally be supported (Generics (UK) v H Lundbeck A/S [2009] RPC 13 at [25]).

5.80 Particular types of claims will often be more likely to involve a consideration of whether there is sufficient support: broad claims, claims by result, claims in which features are defined by function and reach through claims. While these are dealt with specifically in the Guidelines it should be noted that no special rules exist for such claims and they should be construed as per any other type of claim.