IPA patent 6.1.7.1.6-pct-gl-appendix-paragraphs-5.201-and-5.202 — IP Australia Patent Manual of Practice and Procedure – 6.1.7.1.6 Practices for the Interpretation of Claims

Also in this Chapter: 6.1.7.1.1 PCT Guideline References and Flow Chart 6.1.7.1.2 Overview of the Hierarchy 6.1.7.1.3 Special Meaning, Ordinary Meaning, Everyday Meaning 6.1.7.1.4 Closed and Open Definitions and Implications for Interpretation 6.1.7.1.5 Implications of the Hierarchy on Searching 6.1.7.1.7 Interpretation of Citations - Inherency Key Legislation: PCT ISPE Guidelines: Paragraphs A5.20[1]-[2] Introduction The International Searching and Preliminary Examining Authorities have divergent practices with regard to whether the description can provide special definitions of terms that are used in the claims. Examiners should follow the practice in paragraph A5.20[1] of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12). This is because the practice in A5.20[1] more closely aligns with national examination and the reports issued by the major International Search Authorities (with the exception of the US, which appears to follow paragraph A5.20[2]). Using special meaning to interpret claims Special meaning within the description can be used to interpret terms or phrases within the claim (see paragraph A5.20[1] of PCT/GL/ISPE/12). Paragraph A5.20[1] also emphasises that it is not permitted to import gloss from the description to change the claim from the special meaning. Where interpretation is required – for example, if there is no special meaning or the special meaning is non-limiting – then the claims should be interpreted using the description, the drawings and the ordinary meaning. Special meaning brought into the claims Where there is a special meaning for terms or phrases and that meaning is not found within the claims, the claims must be brought into alignment by amendment (see paragraph A5.20[2] of PCT/GL/ISPE/12). The amendment is insertion of the special meaning into the claim. This practice does allow some non-literal interpretation of the claims. The interpretation of the claim should attempt to make technical sense of the claim, which, where required, may involve a departure from a strict literal sense.