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[Waiyeng]

Hi everyone!

I have a disagreement with a colleague who recommends replacing all terms “consist” in a filed application with “comprise” so as to extend the protection available to the applicant. The reason being such amendment does not constitute added matter per se.

However I think such amendment is not supported by the original description as filed.

Any views on this? And any information whether this is commonly done?

[JimIvey]

You shouldn't use either "consist" or "comprise" in the Specification.  Using claim terms of art in the Specification is just too close to inviting importation of limitations from the Spec into the claims.

In the claims, those words are terms of art and should only be used as they are understood in the law.  "Comprise" means includes the listed items but could include more.  "Consist" -- more commonly used as "consist essentially of" -- means that the listed items are included and nothing more is included.

Regards.

[DogDayPM 9er9er9er]

Waiyeng,

In the situation you describe where the application is already filed, I agree with your view that changing the word "consist" to "comprise" should normally be viewed as going beyond the scope of the originally filed application.

At least, I think that would be the case if the specification originally filed was in the English language and the patent office at issue is the US or EPO.

Was the specification originally filed in English?  If not, is there an argument that can be made that the non-English terms representing "consist" and "comprise" have somewhat more flexible definitions than they do in English, and thus that an English translation can take advantage of that flexibility?

And looping back to Jim's points (avoiding words normally thought of as being claims-specific), ordinarily in the specification I'd say that a widget "includes" items A, B, C rather than "comprises" where I want it understood that it is open ended.  One often also sees this stated very explicitly, as in "including for example but not limited to items A, B, C".

[bartmans]

It certainly would be deemed to be added subject matter under the European Patent Convention.

[JimIvey]

Oops.  I missed that point in my first reading.  I was addressing how to write the application in the first place.

As the two words have significantly different meanings in patent law (at least here in the US), the others here are right.  If you want to make those changes to the claims in the form of an amendment, you might have to show support in the specification for such changes to the claims.

Regards.

[patentsusa]

This might be one of those rare occasions where a CIP makes sense.  You get the old filing date for old matter, new filing date for new matter, and patent term based on the original filing date.  You leave for later the argument about whether it is new matter or not.

But I'm not sure we have enough facts to say for sure if it is new matter or not.  If you are just going to amend the claims, the drawings can provide support for the claims. 

[Yak]

Is not using words like "comprise(s)" or "fastening means", etc in the specification a fairly well understood and agreed upon idea.  I swear over half the patents I read during prior art searches use this language in the spec. 

[DogDayPM 9er9er9er]

Is not using words like "comprise(s)" or "fastening means", etc in the specification a fairly well understood and agreed upon idea.  I swear over half the patents I read during prior art searches use this language in the spec. 

I'm sure you do (and I do, too).  But I was trained that the word comprise was only for use in claims for the reasons Jim mentioned above.

You'll also see a lot of "my invention is this" and absolutist statements such as "the thingie must be immovably fastened to the thangie for my invention to function properly". 

Lots of examples of less than optimal drafting out there.

Just hope not much of it is mine...

[Yak]

What is the best way to learn these kinds of tips, techniques, and practices; if you do not have an experienced practitioner to train or mentor you?

[JimIvey]

You'll also see a lot of "my invention is this" and absolutist statements such as "the thingie must be immovably fastened to the thangie for my invention to function properly". 

One thing I won't compromise:  Never, EVER describe the invention directly outside of the claims. 

What is the best way to learn these kinds of tips, techniques, and practices; if you do not have an experienced practitioner to train or mentor you?

At the risk of seeming less than humble, I've thought about writing a book about that.  The working title is "Patent It Well" (as a sort of sequel to "Patent It Yourself").

However, that would mean doing real research to back up most of my instincts.  In addition, I get schooled here once in a while, so I may not be quite the expert to write such a book.  But, I think I can add a level of quality to "Patent It Yourself" -- as a sequel.

To illustrate another option, I've worked with other (less experienced) practitioners to review their work -- but it means finding some way to include my time in the invoice to the client.  It needs to be worked out on a case-by-case basis.

Regards.

[Waiyeng]

yes that's right, the application has already been filed.

Waiyeng,

At least, I think that would be the case if the specification originally filed was in the English language and the patent office at issue is the US or EPO.

Was the specification originally filed in English?  If not, is there an argument that can be made that the non-English terms representing "consist" and "comprise" have somewhat more flexible definitions than they do in English, and thus that an English translation can take advantage of that flexibility?

good point. we missed this out completely when assessing the file. fortunately in our case, the priority document is not in English so we do have an opportunity to research on the meaning of the relevant non-English word and may be able to argue that the true translation of the word can be understood as to mean "comprise" instead of "consist".

however if the application was originally filed in English, amending the term "consist" and "comprise" throughout the description as well as claims just runs foul of added matter restriction. maybe i can convince my colleague about this soon. 

thanks everyone 

[Yak]

Jim,
If you write it, I will buy the first copy.  I have read Patent It Yourself.  In fact, it was a recommended supplement book for my patent drafting class in law school.  It is ok, but I do not think it is not terribly helpful to a practitioner to develop "good" patent drafting skills.  I recently got Sheldon's book from PLI.  But it is a real monster to try and get through.

[orangequant]

two things, one of which is a snippet from a court case i can't find right now (Harnisch?). but here's this:
1. under MPEP 2173.05, IF you have any Markush groups, even if you don't say "group", it's improper to recite "comprise" instead of "consist" (or equivalent term). see
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2173_05_h.htm
if you don't have any Markush, i can only agree with others that "consist" is severely limiting and i avoid it like the plague.

[JimIvey]

I won't go so far as to say never using "consisting".  Like negative limitations and other things to avoid, you sometimes need them to capture the novelty.

Just be aware of what the terms mean and use them when appropriate.  Knowing when they're appropriate is part of what we get the big buck for.

Regards.

[SNielson]

I have a disagreement with a colleague who recommends replacing all terms “consist” in a filed application with “comprise” so as to extend the protection available to the applicant. The reason being such amendment does not constitute added matter per se.

However I think such amendment is not supported by the original description as filed.

Any views on this? And any information whether this is commonly done?

Like everyone else, I would be hesitant to amend the application.  However, you may be able to influence the interpretation of that term by noting in the prosecution history (in an office action response, etc.) that Applicant's use of the term "consist" should be interpreted in an open inclusive manner and not in a restrictive, exclusive, or limiting manner.

You avoid adding new matter, but you put the Applicant on record that the term should be interpreted broadly.  A court may brush aside such a statement, but I can't see how it would hurt you.