Subsidiary and Dependent Claims

1Claims are usually drafted in such a manner that the broader claims figure first followed by subsidiary claims of narrower scope, ie, the broader claims will be interpreted widely as including the subsidiary claim. (See Ultraframe v Eurocell Building Plastics [2005] EWCA (Civ) 761, para 41.) Subsidiary claims have a narrower scope than the antecedent claims to which they are appended. (Glaverbel SA v British Coal Corpn (No 4) (1995) RPC 255, p 281.) In the case of a subsidiary claim, which adds a new element to what is already claimed in the earlier claim, the added element will be regarded as the only inventive step of the subsidiary claim. (See Van der Lely NV v Bamfords Ltd (1963) RPC 61, p 78 (HL).) Words introduced in the subsidiary claim shall not be used to give meaning to the earlier claim which is devoid of such words. (Submarine Signal Co & Submarine Signal Corpn v Hughes & Son (1931) 41 Ll L Rep 21, p 30, (1931) 49 RPC 149, where the court refused to import into claim 1 the element of automaticity found in claim 2.) The court will not allow a limitation in a claim to be construed differently when it is read on its own from what it would mean if read together with other sub-claims. (See Minnesota Mining & Manufacturing Co v Plastus Kreativ AB (1997) RPC 737, p 752.) As subsidiary claims are appended to a broader antecedent claim, it may offer guidance for the construction of the antecedent claim to which it is appended. (Glaverbel SA v British Coal Corpn (No 4) (1995) RPC 255, p 281.) The courts should endeavour to give different meanings to different claims. But if claims do not differ in their meaning, the natural meaning of the claims should be given effect. (See Cleveland Graphite Bronze Co v Glacier Metal Co Ltd (1950) 67 RPC 149, p 153. See also Raleigh Cycle Co Ltd v H Miller & Co Ltd [1948] 1 All ER 308, (1948) 65 RPC 141 (HL).)

2In Pioneer Hi-Bred International v Controller of Patents (2026) the Controller had held of claim 3 that “a percentage identity of more than 80 percent includes in its ambit, a poypeptide with 100% identity to SEQ ID No. 2, i.e naturally occuring polypeptide” (para 12). The Delhi High Court held that “there is merit in the contention of the Appellant” that “the Respondent ought not to have ignored portions of dependent claims 2 and 4, where it is clearly stated that encoded PIP-72 comprises of 1 - 17 amino acid substitutions at various positions when compared to SEQ ID NO: 2 i.e. naturally occurring sequence and therefore, irrespective of the nature of polypeptide, the claimed invention is directed as well as restricted to a synthetic, man-made polypeptide, sharing property resemblance with the natural peptide” (para 17). It remanded the application and made it clear “that this Court has not expressed any opinion on the merits of the case.” (para 18)