{"id":27178,"date":"2024-11-12T11:21:30","date_gmt":"2024-11-12T11:21:30","guid":{"rendered":"https:\/\/regimbeau.eu\/?post_type=insight&p=27178"},"modified":"2025-03-17T15:25:30","modified_gmt":"2025-03-17T15:25:30","slug":"obtaining-the-technical-effect-across-the-entire-scope-of-the-claims-consider-it-right-from-the-drafting-stage","status":"publish","type":"insight","link":"https:\/\/regimbeau.eu\/en\/insight\/obtaining-the-technical-effect-across-the-entire-scope-of-the-claims-consider-it-right-from-the-drafting-stage\/","title":{"rendered":"Obtaining the technical effect across the entire scope of the claims: consider it right from the drafting stage!\u00a0"},"content":{"rendered":"\n

In this respect, drafting clear claims is essential. The exclusive rights conferred by the patent necessitate that third parties are not left in doubt about what is and is not encompassed by the claims. The case law of the EPO\u2019s Boards of Appeal has slightly broadened this concept of clarity to include the requirement that the main claim must indicate all the features that are essential<\/strong> in solving the technical problem the invention seeks to address. Therefore, when drafting claims, it is crucial to balance the desire to maximize the scope of the claims in the patentee's interest<\/strong> with the need to limit this scope by specifying the essential features.\u00a0<\/p>\n\n\n\n

But that\u2019s not all. <\/p>\n\n\n\n

A patent must also withstand challenges such as lack of patentability<\/strong>, particularly for lack of inventive step. Here again, the claims play a key role. Inventive step is typically assessed based on the technical effect associated with the specific contribution of the invention compared to the prior art, as stated in the main claim. However, for this technical effect to be considered, it must be obtained across the entire scope of the claim.\u00a0<\/p>\n\n\n\n

To illustrate this criterion, consider the following example: <\/p>\n\n\n\n

An innovative process enables the production of a cosmetic cream that is absorbed through the skin significantly faster than in the prior art. This process involves, among others, a heating step at a temperature of 150\u00b0C, while conventional processes typically use heating at temperatures around 50\u00b0C. It is clear that the rate of absorption positively correlates with the level of heating. When drafting, it might be tempting to claim that the heating step is performed at a temperature above 60\u00b0C, which would distinguish the invention from the prior art while providing broad protection for the patent. However, there is a risk that it might later be shown that the claimed technical effect\u2014faster absorption\u2014is only achieved at temperatures above 100\u00b0C, and not across the entire temperature range from 60\u00b0C to 100\u00b0C encompassed by the claim. If the technical effect is not obtained throughout the full scope of the claim, this could result in a lack of inventive step for the claimed subject matter, as at least part of the processes encompassed by the claim would not involve an inventive step.<\/strong>\u00a0<\/p>\n\n\n\n

Such considerations often arise in the field of chemistry, where examples similar to this one are frequently encountered. However, they are increasingly being discussed in fields such as mechanics, computer science, electronics, or telecommunications. For instance, this aspect was extensively discussed in EPO\u2019s Enlarged Board of Appeal decision G1\/19 and the related decision T 0489\/14, which concerned a method for simulating the movement of a crowd of pedestrians within an environment. In assessing the inventive step of such a method, the question arose regarding the technical effect produced by the simulating data generated by the claimed method<\/strong>. <\/p>\n\n\n\n

The EPO concluded that, in some embodiments encompassed by the claim\u2014for instance, in a video game or a university lecture\u2014such data might not have any technical application and thus could not contribute to an inventive step. Consequently, an inventive step could not be justified across the full scope of the claim, which was therefore refused on this basis.\u00a0<\/p>\n\n\n\n

This example, among others, demonstrates how crucial it is to address these issues right from the drafting stage. Regimbeau\u2019s teams are fully dedicated to assisting you in this regard. So do not hesitate to contact them with any questions you may have. <\/p>\n","protected":false},"excerpt":{"rendered":"

In this respect, drafting clear claims is essential. 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