This composition is part of a series of papers agitating options and stylish practices for minimising claim freights under the new rules.( 1) There are three possible approaches for minimising the number of claims and associated redundant claim freights
cancelling claims;
making use of multiply-dependent claims; and
consolidating the subject matter of separate claims as druthers
within a single claim.
This composition focuses on multiply-dependent claims.
Elucidative claim set
The following elucidative claim set will be used throughout the remainder of this composition to illustrate claim figure computations and matters of claim interpretation and validity
claim one – a medicinal composition comprising emulsion A and a pharmaceutically respectable excipient;
claim two – a medicinal composition comprising emulsion B and a pharmaceutically respectable excipient;
claim three – a medicinal composition comprising emulsion C and a pharmaceutically respectable excipient;
claim four – the medicinal composition according to any one of claims one to three, in the form of a tablet;
claim five – the medicinal composition according to any one of claims one to three, in the form of a capsule;
claim six – the medicinal composition according to any one of claims one to five, wherein said pharmaceutically respectable excipient comprises
a flavouring agent;
a disintegrant;
a colourant;
a glidant; or
a preservative;
claim seven – the medicinal composition according to any one of claims one to six, comprising, as anon-nutritive sweetener, a sugar alcohol named from the group conforming of
xylitol;
maltitol;
sorbitol;
mannitol; and
erythritol; and
butylated hydroxyanisole;
butylated hydroxytoluene;
sodium metabisulfite; or
propyl gallate.
claim eight – the medicinal composition according to any one of claims one to seven, comprising, as a preservative, an antioxidant that is
Multiply-dependent claims
Multiply-dependent claims( claims four to eight in the elucidative claim set) are permitted, and a multiply-dependent claim may depend on another multiply-dependent claim( claims six to eight in the elucidative claim set). In discrepancy to US practice, in Canada, a multiply-dependent claim counts only as a single claim for the purposes of calculating claim freights, the applicable vittles of the rules furnishing
A claim that defines the subject- matter of an invention in the volition, including a dependent claim within the meaning of section 63 that refers to further than one antedating claim, counts as a single claim for the purposes of( claim figure computations).( 2)
The elucidative claim set, thus, contains only eight claims for figure computation purposes. Claim freights would accrue snappily if the multiply-dependent claims were rewritten with only single dependences . For case
each of claims four and five could be written as three independently-dependent claims;
claim six could be written as nine independently-dependent claims;
claim seven could be written as 18 independently-dependent claims; and
claim eight could be written as 36 independently-dependent claims.
Therefore, to gain the same content without the use of multiple claim dependences , the elucidative claim set would have to contain 72 rather than eight claims for figure computation purposes.
Pursuant to section 58 of the Patent Act, invalid claims in a patent don't affect valid claims
When, in any action or pacing esteeming a patent that contains two or further claims, one or further of those claims is or are held to be valid but another or others is or are held to be invalid or void, effect shall be given to the patent as if it contained only the valid claim or claims.
In discrepancy to the new figure computation vittles, the Patent Rules describe each claim reliance within a multiply-dependent claim as a separate claim.
Subsection 63( 3) of the Patent Rules provides that" A dependent claim that refers to further than one claim must relate to those claims in the volition only."
Subsection 63( 4) of the Patent Rules provides that
A dependent claim is considered to include all the limitations contained in the claim to which it refers or, if the dependent claim refers to further than one claim, any particular volition of the dependent claim is considered to include all the limitations contained in the particular claim in respect of which it's considered.
also, in Consolboard,( 3) without representing any particular provision of the Patent Act or Patent Rules,( 4) the Supreme Court of Canada held that dependent claim 10 of Canadian PatentNo.,618 directed to"( a) consolidated structure as claimed in claim 7, 8 or 9, in which the phased ends of the wafers are ragged", was valid" in so far as claim 10 includes claim 7". Each of claims seven, eight and nine were independent claims to a" consolidated structure" – videlicet, a wafer board composed of woody wafers and a thermosetting resinous binder. Independent claim seven was set up to be valid but claims eight and nine invalid. Multiply-dependent claim 10 was valid when dependent on claim seven. The Consolboard approach, as it applies to multiply-dependent claims, was followed by the Federal Court in GD Searle.( 5) Multiply-dependent claims have therefore been set up to constitute separate claims for the assessment of validity.
There are other dependent claim formats that might be employed to reduce claim freights and that haven't been specifically considered by the courts or that are simply uncommon.
A claim in the form" 16. A emulsion according to any one of claims 1- 5, a pharmaceutical composition according to any one of claims 6- 10, or a tackle according to any one of claims 11- 15, wherein R1 is- OH" has not routinely been used in Canada but could in principle be employed to minimise claim freights. Indeed though the preamble of the claim refers to antedating claims in different orders, reference is made to each claim independently and the claim meets all the formal conditions for a dependent claim set out in section 63 of the Patent Rules. harmonious with the finding of the Supreme Court in Consolboard, it appears claim 16 should be considered independently with respect to each of its dependences . For case, if claim five to a emulsion were invalid but claim 12 to a tackle valid, claim 16 could be valid in so far as it depends from, and farther limits, claim 12 directed to a tackle.
A generally used claim format is" 17. Use of a emulsion according to any one of claims 1- 5 for the treatment of diabetes".
This claim differs from former exemplifications in that the claim is directed to use and refers to antedating claims directed to composites. The claims are therefore in different" orders", in discrepancy to the claims in the elucidative claim set over.
Representing kindly
different exemplifications, the Manual of Patent Office Practice( MOPOP) states that claims of one order pertaining to claims of another order may be permitted, but aren't dependent claims( 6)
Claims are also permitted to relate to other claims or corridor of claims of the same or of another order, in order to avoid repeating lengthy delineations formerly given and to simplify claiming, handed they don't come nebulous as a result of similar reliance, thereby breaching section 27( 4) of the Patent Act. similar claims still aren't dependent claims and section 63 of the Patent Rules doesn't apply. The patentability of the claim appertained to doesn't inescapably indicate the patentability of the dependent claim containing the reference.( Emphasis added.)
Still, the MOPOP isn't a binding legal authority, and no authority is cited for this proposition. Indeed, exemplary claim 17 appears to meet all the conditions of a dependent claim set forth in subsections 63( 1)-( 3) of the Patent Rules
It" includes all the features of one or further other claims" in that it doesn't cover the use of any composites not encompassed by the emulsion claims to which it refers.
It refers" by number" to the other claim or claims.
It states" the fresh features claimed". In this regard, the fresh point is the limitation to the use of the emulsion for treating diabetes. The antedating claims are infringed by the use of the emulsion for any purpose, whereas claim 17 is limited in compass to use in the treatment of diabetes.
It refers only to" a antedating claim or claims".
It refers to claims 1- 5" in the volition only".
As it seems to meet the specified formal conditions, it appears that exemplary claim 17 nicely should be demonstrated as a dependent claim pursuant to subsection 63( 4) of the Patent Rules and thus be
considered to include all the limitations contained in the claim to which it refers or, if the dependent claim refers to further than one claim, any particular volition of the dependent claim is considered to include all the limitations contained in the particular claim in respect of which it's considered.
nonetheless, for the avoidance of any mistrustfulness, the most conservative course is to include a separate claim for subject- matter of particular significance, indeed if redundant claim freights may be incurred.
For farther information on this content please communicate David Schwartz at Smart & Biggar by telephone( 16132322486) or dispatch(deschwartz@smartbiggar.ca). The Smart & Biggar website can be penetrated atwww.smartbiggar.ca.
Endnotes
1) For the first composition in the series, see" Canada's new patent claim figure rules indispensable images within a single claim – part bone
".
2) This language is set up in both subsection 80(1.1)( redundant claim freights when requesting examination) and subsection 87(1.1)( redundant claim freights outstanding with final figure) of the Patent Rules.
3) Consolboard Inc v MacMillan Bloedel( Sask) Ltd,( 1981) 1 SCR 504 at pp 537- 538.
4) Including section 60 of the Patent Act, RSC 1970, chapter P- 4, the former counterpart to current section 58.
5) GD Searle & Co v Novopharm Limited, 2007 FC 81( celecoxib) at para( 26)-( 32).
6) MOPOP at section16.06. specially, the MOPOP isn't a binding legal authority.