Скачать или смотреть IP Quick Tip: How to avoid clarity objections? (2020)

Today, I want to provide you with some guidance how to deal with clarity objections raised against European patent applications.

As you all know, besides patentability issues, EPO examiners often raise a clarity objection during the examination phase. Most of these objections relate to formal issues, such as the incorporation of the disclosure of a priority document into the description or missing reference signs, for example.

While it is easy to deal with these kinds of formal clarity objections, it might become much more difficult when the objection pertains to the claim language itself. Therefore, I recommend carefully drafting your claims to ensure that clarity objections are avoided from the beginning.

These the three most common objections raised by examiners with reference to the claim wording:

1) Lack of essential features
2) Result to be achieved
3) A specific term lacks a clear technical definition

So, how can these objections be avoided or at least remedied?
Concerning the lack of essential features, you have to ensure that all features are included in the claim wording which are necessary for achieving the technical effect underlying the solution of the technical problem with which the application is concerned.
With respect to the “result to be achieved” objection, keep in mind that defining an invention by a result to be achieved is generally not allowed. Instead, I recommend using structural features or clear method steps to define the scope of protection.
Finally, if you make use of terms that might have no clear technical meaning in order to achieve a broader scope of protection, you should ensure that proper explanations of these terms are included in the description that may be used later to amended the claims to remedy such a clarity objection.

Should you be interested in more IP QuickTips like this one, please check out the BARDEHLE PAGENBERG YouTube channel.