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

“Preferred” and “optional” definitions

5.55 The terms “such as”, “for example”, “preferably”, “particularly” or “more particularly” generally will not introduce ambiguity into the claims – the scope of the claim will be set out by the broader definition, with the subsequent narrower terms merely being preferred embodiments that do not limit the scope of the claim. An objection (lack of clarity) should only be raised if the scope of the claim is rendered unclear. For example, if one of the optional features does not fall within the scope of the broader definition then an objection should be taken. For example:

“wherein the colour is a primary colour, preferably red, orange or yellow, more preferably pink”

In this case, the optional features introduce a lack of clarity since the claim defines the colour broadly to be a primary colour but pink (a non-primary colour) is given as an option (a similar issue would arise if pink was provided as a preferred embodiment in an appended claim).

5.56 The term “and the like” may cause a lack of clarity in some cases. For example, a definition such as “domestic pets including cats, dogs and the like” could be interpreted in different ways. “and the like” could mean including other domestic pets (e.g. birds, fish, reptiles). However, it could also mean other mammalian domestic pets (e.g. mouse, hamster, horse). These expressions should be objected to if they cast doubt on the scope of a claim.

5.57 Terms like “generally”, “typically”, “in some cases” in a claim may be a source of ambiguity as they define the scope in uncertain terms. If the scope of the claim is rendered unclear to the skilled person by using such terms, then an objection should be taken.

5.58 Terms such as “optionally”, “if desired”, “when required” suggest that the component, part or condition to which they relate is optional, not essential. If the term relates to a non-essential element, then it is immaterial to the working of invention, and no objection should be taken. However, if the element is deemed essential, an objection should be made. This is likely an objection of lack of support instead of lack of clarity – the claim does not include an essential feature.