Quick Navigation
Claims
Art. 84 EPC lays down the relevant principles governing the content and wording of the claims, providing that claims should be clear and concise and be supported by the description. It is supplemented by R. 43 EPC.
When the EPC was revised, the German and English versions of Art. 84 EPC were only amended under Art. 3(1) of the Revision Act (alignment/minor amendment; see OJ SE 4/2007, 84). Similarly, R. 29 EPC 1973, which after renumbering became R. 43 EPC, simply underwent streamlining and alignment (see OJ SE 5/2007, 72). In substance, the two provisions remain unchanged, which means that the EPC 1973 case law continues to apply.
As explained in decision G 2/88 (OJ 1990, 93, Corr. 469) in relation to EPC 1973, Art. 84 EPC provides that the claims of a European patent application "shall define the matter for which protection is sought". R. 43(1) EPC further requires that the claims "shall define the matter for which protection is sought in terms of the technical features of the invention". The primary aim of the wording used in a claim must therefore be to satisfy such requirements, having regard to the particular nature of the invention, and the purpose of the claims. The purpose of claims under the EPC is to enable the protection conferred by the patent or patent application to be determined (Art. 69 EPC), and thus the rights of the patent owner within the designated contracting states (Art. 64 EPC), having regard to the patentability requirements of Art. 52 to 57 EPC.
There are basically two different types of claim, namely a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use). These two basic types of claim are sometimes referred to as the two possible "categories" of claim. Within the above two basic types of claim various sub-classes are possible (e.g. a compound, a composition, a machine; or a manufacturing method, a process of producing a compound, a method of testing, etc.). Furthermore, claims including both features relating to physical activities and features relating to physical entities are also possible. There are no rigid lines of demarcation between the various possible forms of claim.
The technical features of the invention are the physical features which are essential to it. The technical features of a claim to a physical entity are the physical parameters of the entity, and the technical features of a claim to an activity are the physical steps which define such activity. The Enlarged Board of Appeal also pointed out, however, that the boards of appeal had in a number of cases allowed the technical features to be defined functionally in certain instances (e.g. T 68/85, OJ 1987, 228; T 139/85).
So-called reach-through claims are to be distinguished.
In T 1063/06 (OJ 2009, 516) the board held that a formulation of a claim whereby functionally defined chemical compounds were to be found by means of a new kind of research tool using a screening method set out in the description constituted a reach-through claim which was also directed to future inventions based on the one now being disclosed. As the applicant was entitled to claim patent protection only for his actual contribution to the art, it was therefore both reasonable and imperative to limit the claim's subject-matter accordingly. Patent protection under the EPC was not designed for the purpose of reserving an unexplored field of research for a particular applicant, as reach-through claims did, but to protect factual results of successful research as a reward for making concrete technical results available to the public.
The boards of appeal have repeatedly confirmed that claims had to be clear for the sake of legal certainty, as their purpose was to enable the protection conferred by the patent to be determined (see e.g. T 337/95, OJ 1996, 628; T 338/95, T 586/97, T 437/98, T 728/98, OJ 2001, 319; T 877/99, T 1074/00, T 799/04).