The Application

Number of claims (Rule 19(6)) and numbering of claims (Rule 19(6A)2)

5.5 Rule 19(6) states that the number of claims shall be reasonable in consideration of the nature of the invention claimed, and Rule 19(6A) specifies that where there are 2 or more claims, the claims shall be numbered consecutively in Arabic numerals.

5.6 While Rule 19(6) suggests that the number of claims shall be reasonable, there is no specific limitation in this regard. In practice, consideration of this Rule would be essentially the same as that required under Section 25(5)(b) (the claimor claims shall… be clear and concise). An objection under Rule 19(6) that the number of claims is excessive will be rare, and if there is any doubt in this regard it should be discussed with a Senior Examiner prior to raising the objection.

5.7 Rule 19(6A) also requires that the claims be numbered consecutively in Arabic numerals. An objection of this nature is likely to be raised where a claim number has been inadvertently omitted during drafting, thus resulting in a particular claim not being numbered in the application as filed. This should be indicated in Box VI of the written opinion as it would be a defect in the form of the application, and the Examiner may append a suitable label to the unnumbered claim for the purpose of examination.

5.8 In addition, since such omission would also affect the indication of the basis of the written opinion in Box I, an appropriate explanatory comment should be made under “4. Additional observations”. Claim numbers should be whole numbers alone and other combinations (for example, 9a, 9b, 9c, etc., letters or other forms of numbering such as Roman numerals) should be objected to.

5.9 Notably, Rule 19(6A) states that where there are 2 or more claims they shall be numbered consecutively in Arabic numerals. It follows that a single claim need not be numbered and no objection should be raised in such cases.

5.10 It should also be noted that amendments and corrections comprising marked up changes are generally filed in which claim numbers may be omitted. Suchcases may be objected to in the same manner as prescribed in paragraphs 5.7 and 5.8 above.