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

Claims by result

5.96 Claims by result generally define the invention in terms of a desired outcome or property. For example:

“Modified protein X having binding activity more than the unmodified protein X.”

5.97 In this case, the inventor may have found a particular way of modifying protein X to produce greater binding activity, but has attempted to claim all modified forms of the protein that exhibit this greater binding activity. Depending on the facts of the case, this may or may not be an allowable type of claim.

5.98 In particular, where a claim defines the invention in terms of desirable results the specification will need to provide enough instruction for the skilled person to make each product and/or work all the processes that are encompassed by the claim, without undue burden or the need for further invention. An objection should not be raised merely on the basis that the claim defines the invention in terms of a desired result. The usual considerations of whether the specification enables the full scope of the claim and whether the claims encompass matter that owes nothing to the teaching of the invention will apply.

5.99 “All means” claims may also be allowable if the invention lies in the identification of the problem. In David Kahn Inc v Conway Stewart & Co Ltd [1974] RPC at [319]- [320], it was stated that:

“A patentee may rightly claim a monopoly wider in extent that what he had invented. If he has discovered a general principle or invented a general method and discloses one way of carrying it out, he may claim all ways of carrying it out, but he is not entitled to claim a monopoly more extensive than is necessary to protect what he has himself said is his invention. He cannot claim all solutions to a problem unless invention lies in identification of the problem.”

5.100 Thus for example, in No-Fume Ltd v Frank Pitchford Co Ltd [1935] 52 RPC 231, an “all means” claim of the following form was considered supported:

“An ash tray receptacle which without the use of movable parts, retains the smoke arising from objects thrown into it.”

In this case, it was determined that the invention could not be adequately characterised in any other manner. Furthermore the invention could be realised by using dimensions other than those specifically disclosed in the specification, and the skilled person could determine these without any inventive ingenuity.

5.101 In contrast, a claim to the use of all vectors producing a certain result may not be supported if the invention is the use of a particular new insert in a vector to produce a polypeptide having a certain activity (Schering Biotech Corp’s Application [1993] RPC 249).

5.102 Similarly, in N V de Bataafsche Petroleum Maatschappij’s Application [1956] 57 RPC 65, the claim broadly defined that an aqueous dispersion of a bituminous substance forming part of a mixture which penetrated the soil and coagulated therein was “suitably stabilized”. The specification provided no instructions as to  how this was achieved and as a consequence the claim was found to lack support. In this case, the Court followed the guidance of Lord Parker in British United Shoe Machinery Co Ltd v Simon Collier Ltd 26 RPC 21 at [49]-[50]:

“The problem was simply how to do automatically what could already be done by the skill of the workman. On the other hand, the principle which the inventor applies for the solution of the problem is the capacity of a cam to vary the relative positions of two parts of a machine while the machine is running. Assuming this principle to be new, it might be possible for the inventor, having shown one method of applying it to the solution of the problem, to protect himself during the life of his patent from any other method of applying it for the same purpose, but I  do not think that the novelty of the principle applied would enable him to make a valid claim for all means of solving the problem whether the same or a different principle were applied to its solution.”

5.103 Thus, if the problem is known, then the invention cannot lie in identifying the problem. In such cases the claims will need to be limited to the particular features that the inventor has found to solve the problem.