IPA patent 6.1.11.11-grouping-the-claims — IP Australia Patent Manual of Practice and Procedure – 6.1.11.11 Grouping the Claims

Also in this Chapter: 6.1.11.1 Overview - Novelty / Inventive Step 6.1.11.2 Inventive Step 6.1.11.3 Searching Product by Process Claims 6.1.11.4 Dates Searched 6.1.11.5 Conducting the Search 6.1.11.6 Useful Techniques (‘piggy back/forward’ searching) 6.1.11.7 Obtaining Full Copies 6.1.11.8 Considering and Culling the Documents 6.1.11.9 Ending the Search 6.1.11.10 Categorising the Citations ​​​​​​​​​​​​​​ Key Legislation: Regulations under the PCT: Rule 6.4(a) Dependent Claims Dependent claims that define the same feature or variations of a feature can be grouped together in a detailed discussion. The same feature may be defined in claims dependent on different independent claims. For example, independent claims to a method, system and apparatus frequently define the same features and have dependent claims defining the same features. Examiners should identify claims with repeated features at the beginning of working on a case as part of thorough claim construction. Variations of a feature are often present in a sequence of claims. For example, where a range of values may be defined broadly, then more narrowly, then narrower still. To obtain a required level of detail in the most efficient manner, the focus needs to be on the narrowest claim. If the features of this claim are disclosed, then all the claims in the sequence will also be disclosed. Multiple dependent claims Where a feature in a multiple dependent claim is anticipated, these claims are considered to lack novelty or inventive step if any of the claims they are appended to lacks novelty and inventive step, and the features added in the dependent claim does not introduce novelty or inventiveness. A discussion of all the possible combinations is considered to introduce unnecessary complexity to our reports and to be unduly time intensive. Such claims have the potential to be disallowed under Rule 6.4(a) of the PCT and represent a style of claim drafting rather than a genuine definition of the scope of an invention.