Clarity and conciseness of claims (Section 25(5)(b))

Inconsistencies between claims and description

5.73 Section 113 prescribes that the extent (scope) of protection conferred is determined in accordance with the claims of the application, as interpreted by the description and any drawings contained in the specification.

5.74 Therefore, the description should not contain material that renders the scope of the claimed invention unclear. Thus, if embodiments are provided that do not fall within the apparent scope of the invention then it should be made clear that these are intended for comparative purposes and are not intended to be claimed. Similarly, statements in the description that purport to extend the scope of the claims (such as “the invention should be taken to include modifications…”) should be avoided. For example, when a claim is directed to a compound, then terms such as solvates, metabolites, prodrugs, derivatives and similar terms which are not claimed and which make the boundary of the compound claim unclear, should be removed from the description. This is consistent with the decision in American Home Products vs Novartis Pharmaceuticals [2000] EWCA Civ 231, where the Court had construed a claim to rapamycin as encompassing within its scope derivatives of rapamycin in view of a passage in the description. With respect to compounds and formulae which are not claimed, it should be clear from the description that they are not part of the embodiments of the invention. However, removing the unclaimed compounds and formulae from the description may not be necessary if the scope of the compound claim can be clearly determined when it is read together with the description.

5.75 In cases where, as a result of amendment, there are specifically described embodiments or statements in the description and drawings which are inconsistent with the claims, a clarity objection to the claims should be raised if such inconsistency would throw doubt upon the scope of protection sought by the applicant. It is up to the applicant how this objection (if raised) is overcome; normally the simplest course will be to delete the subject matter which is now outside the scope of the claims, but the matter may be retained provided it is made clear in the description that the matter does not constitute an embodiment of the invention. This latter approach may be preferable in a situation where embodiments falling within the claims are partly described with reference to such matter. On the other hand, if the applicant, by way of submissions in response, can show persuasively that the scope of the claims would be clear to a person skilled in the art, then the objection should be withdrawn.