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

Mere coincidence of language is not sufficient

5.81 More than just a mere coincidence of language is needed between the claims and description to meet the requirement that the claims are not broader than justified by the description and drawings. As noted by Aldous J in Schering Biotech Corp’s Application [1993] RPC 249 at [252]-[253]:

“to decide whether the claims are supported by the description, it is necessary to ascertain what is the invention which is specified in the claims and then  compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe mere mention in the specification of features appearing in the claim is not necessarily sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.”

5.82 Where the subject matter is clearly disclosed in a claim but not elsewhere in the specification it may be permissible to amend the description to incorporate such matter. The key consideration will then be whether the amendment introduces additional matter.