Read this list of words:
The list has a few more to add (scroll to the end for some more), but for this brief article, let’s focus on these four for the time being, since it illustrates the point.
We’re often asked by first time inventors ‘why shouldn’t I write my own patent?’, or ‘why should I pay for a patent attorney to write my patent?’. The value of a patent is all in the detail, and more particularly, the specific words used. Do not think solely about the ‘now’, consider five or ten years’ time, consider the ‘long game’. Imagine where you want to be, not where you are now. In five or ten years’ time, you want to have a multi-million pound, euro or dollar business, and one of the cornerstones of that business will be your Intellectual Property – the patents, trademarks, designs, copyright, technical know-how and so on. Imagine a buyer at that time considering purchasing your business, this is the opportunity to have the financial freedom that you have been working so hard towards. The buyer will ask her lawyers to dissect your intellectual property (amongst other things) to determine whether it is worth the value that you are demanding. This is where the importance of your word choice comes into play …
Let’s take ‘comprising’ and ‘consisting’. What’s the difference? Most dictionaries define these two words as being generally the same and therefore largely interchangeable. That is not the case in patent law. The word ‘comprising’ is considered an ‘open ended’ term; the word ‘consisting’ or ‘consists of’ is considered a ‘closed’ term.
‘Open ended’ means that your inventive apparatus, system or compound that you are claiming in your patent may have other features in addition to those essential features that are mentioned. ‘Closed’ excludes any element not mentioned in your claim.
A patent example
So, let’s go back to our buyer that is keen to purchase your successful business, for example, a safety razor business. Your patent claim requires: ‘A safety razor blade unit comprising a guard, a cap, and a group of first, second and third blades’. Therefore, because we are using ‘comprising’ which is ‘open-ended’, the razor may include other features, such as fourth and fifth blades, but must have at least the guard, cap and three blades as a minimum. Okay, this is reasonably broad, and as such ‘comprising’ would seem to be a good term to use.
What if your patent claim instead said: ‘A safety razor blade unit consisting of a guard, a cap, and a group of first, second and third blades’? Now, under patent law, that should typically be interpreted to mean that your safety razor blade unit only has the guard, cap and three blades, and no other features. So, if our buyer now decides to produce her own razor blade unit with an extra blade, making four blades in total, she’s circumvented your patent, and she no longer needs to buy your company. The deal’s off.
We should always use ‘comprising’, then, right? Again, it is not as black and white as that. When you file your patent application, it will go through a rigorous examination process at the national Intellectual property office. The Examiner will try and knock out your idea. They do not want to grant you a patent if it overlaps with inventions and ideas that have been tried before. Additionally, you cannot add new material to your patent application after filing it. Therefore, although using the term ‘comprising’ as an open ended term to cover more options, what happens when the Patent Office Examiner finds an earlier patent document suggesting most of your ideas, but perhaps not all? Will you be able to restrict your patent to a more specific group of features? This is potentially where being able to use the closed ended term ‘consisting of’ could come in useful. It may help get your patent through to grant in the first place.
And how about ‘including’ and ‘having’?
Well, ‘including’ is generally considered to be synonymous with ‘comprising’, along with ‘containing’ and ‘characterized by’.
‘Having’ is a little trickier. By and large in Europe and the UK, this word is generally considered to be the same as ‘comprising’ and therefore ‘open ended’. But in the US, where many of us will want patent protection due to it being the world’s largest market, the scope of the word ‘having’ and whether it is ‘open ended’ or ‘closed’ is determined based on the rest of your patent document, and in particular the description that precedes the claims.
And then there are: ‘consisting essentially of’, ‘composed of’, ‘adapted to’, ‘adapted for’, ‘wherein’, ‘whereby’ …
It is understanding these options, the intricacies of the language in view of the established law, that you are paying your patent attorney for. This will not only give you the best option for obtaining grant of your patent, but will also give you the best chance to build a solid foundation for a valuable company in the future.