Trilateral Project 24.1-Biotechnology 007

The clarity of the claims is of utmost importance, as they define the scope of the matter for which protection is sought. The skilled person must be aware whether or not he or she is working within the scope of a claim. In principle, the area defined by a claim must be as precise as the invention allows; that is to say, the scope of a claim must be clearly and unambiguously defined. In general, claims which attempt to define the invention by a result to be achieved are not allowed, in particular if they only amount to claiming the underlying problem, in other words the result to be achieved. Moreover, where the patentability depends on a technical effect the claims must be so drafted as to include all the technical features of the invention which are essential for the technical effect.

However, claims worded in terms of functional features may be allowed if the invention either can only be defined in such terms or cannot otherwise be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests or procedures ad-equately specified in the description or known to the person skilled in the art and which do not require undue experimentation.

A claim which can only be defined by the result to be achieved and fulfils the requirements as set out above has to be interpreted in the light of the description when defining the scope of said claim.

The terminology "single-means" claim does not apply in EPO practice.