Wednesday, April 27, 2016

Oh, patents! Patentese…

Copyright © Françoise Herrmann

The EPO Guidelines for Examining European Patent Applications (the European equivalent of the USPTO Manual of Patent Examining Procedures) specifies in Section 4.21 titled Comprising vs consisting (in English) and Comprendre et consister en (in French), the legal differences between these two terms  used in the recitation of patent claims.

 In a nutshell, the term “comprising” is construed as having a much broader and open-ended legal meaning which does not exclude any part or item not specifically mentioned, whereas the term “consisting” is construed as having a closed meaning, in that it excludes any items not mentioned.  So for example, a door patent consisting only of the wood or composite slab (not the hinges, knob or handle, or jam). This obviously has crucial implications within the context of an invention in regards the various components which will be considered as belonging to invention, and ultimately patented and excluded from third party uses, without licensing or other transfer of rights.

The European Patent Application EP 2876203A1 disclosing the SuperCritical CO2 technology, just previously discussed and upon which Nike’s Colordry dyeing process is based, presents another interesting feature.

The recitation of the SuperCritical CO2 invention precisely explains the use of the term “comprise” within the description of the invention.

Thus, for the record as an interesting example of linguistics at the intersection of law and science, and for anyone interested in the terms “comprise” vs "consisting" as governed by legal specification, I am including the relevant paragraph extracted directly from the European patent  EP2876203A1 titled  Supercritical CO2. The use of this term effectively widens the scope of the claims to include all that is stated without excluding any other steps or integers, or combinations thereof, not specifically included.

[0013] Throughout this specification and the claims which follow, unless the context requires otherwise, the word "comprise", and variations such as "comprises" and "comprising", will be understood to imply the inclusion of a stated integer or step or group of integers or steps but not the exclusion of any other integer or step or group of integers or steps.

Now, remember to mind your patentese…. It makes a huge legal difference in this case --- and most of the time. 

EPO - Guidelines for examining patent applications (4.21) Comprises vs. consisting
EPO - Directives relaives à l'examen pratiqué (Sec. 4.21) Comprendre et consister en

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