Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (6)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
To learn more:
Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”
The significance of transitional phrases includes:
- Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
- Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
- Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.
For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.
Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.
To learn more:
How does “having” function as a transitional phrase in patent claims?
The transitional phrase “having” in patent claims can function in different ways depending on the context:
- Open-ended transition: “Having” is generally interpreted as an open-ended transition, similar to “comprising,” unless the specification or other circumstances suggest otherwise.
- Closed transition: In some cases, “having” can be interpreted as a closed transition, similar to “consisting of,” if the intrinsic evidence clearly indicates that intent.
According to MPEP 2111.03:
“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.“
When interpreting claims with “having” as a transitional phrase, examiners and practitioners should carefully consider the specification and prosecution history to determine the intended scope.
To learn more:
The interpretation of other transitional phrases like “having” in patent claims depends on the context and the specification. The MPEP states, Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
This means that unlike the more standardized phrases like “comprising” or “consisting of”, the interpretation of “having” can vary. It may be interpreted as open-ended (similar to “comprising”) or closed (similar to “consisting of”) depending on the specific language in the specification and the overall context of the invention.
For example, the MPEP cites cases where “having” has been interpreted differently:
- In Lampi Corp. v. American Power Products Inc., “having” was interpreted as open terminology.
- In Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., the term “having” in the transitional phrase did not create a presumption that the body of the claim was open.
This variability in interpretation underscores the importance of clear and precise language in patent drafting and the need for careful analysis during patent examination and litigation.
To learn more:
Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
To learn more:
MPEP 2111.03 – Transitional Phrases (6)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
To learn more:
Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”
The significance of transitional phrases includes:
- Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
- Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
- Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.
For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.
Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.
To learn more:
How does “having” function as a transitional phrase in patent claims?
The transitional phrase “having” in patent claims can function in different ways depending on the context:
- Open-ended transition: “Having” is generally interpreted as an open-ended transition, similar to “comprising,” unless the specification or other circumstances suggest otherwise.
- Closed transition: In some cases, “having” can be interpreted as a closed transition, similar to “consisting of,” if the intrinsic evidence clearly indicates that intent.
According to MPEP 2111.03:
“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.“
When interpreting claims with “having” as a transitional phrase, examiners and practitioners should carefully consider the specification and prosecution history to determine the intended scope.
To learn more:
The interpretation of other transitional phrases like “having” in patent claims depends on the context and the specification. The MPEP states, Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
This means that unlike the more standardized phrases like “comprising” or “consisting of”, the interpretation of “having” can vary. It may be interpreted as open-ended (similar to “comprising”) or closed (similar to “consisting of”) depending on the specific language in the specification and the overall context of the invention.
For example, the MPEP cites cases where “having” has been interpreted differently:
- In Lampi Corp. v. American Power Products Inc., “having” was interpreted as open terminology.
- In Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., the term “having” in the transitional phrase did not create a presumption that the body of the claim was open.
This variability in interpretation underscores the importance of clear and precise language in patent drafting and the need for careful analysis during patent examination and litigation.
To learn more:
Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
To learn more:
Patent Law (6)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
To learn more:
Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”
The significance of transitional phrases includes:
- Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
- Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
- Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.
For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.
Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.
To learn more:
How does “having” function as a transitional phrase in patent claims?
The transitional phrase “having” in patent claims can function in different ways depending on the context:
- Open-ended transition: “Having” is generally interpreted as an open-ended transition, similar to “comprising,” unless the specification or other circumstances suggest otherwise.
- Closed transition: In some cases, “having” can be interpreted as a closed transition, similar to “consisting of,” if the intrinsic evidence clearly indicates that intent.
According to MPEP 2111.03:
“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.“
When interpreting claims with “having” as a transitional phrase, examiners and practitioners should carefully consider the specification and prosecution history to determine the intended scope.
To learn more:
The interpretation of other transitional phrases like “having” in patent claims depends on the context and the specification. The MPEP states, Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
This means that unlike the more standardized phrases like “comprising” or “consisting of”, the interpretation of “having” can vary. It may be interpreted as open-ended (similar to “comprising”) or closed (similar to “consisting of”) depending on the specific language in the specification and the overall context of the invention.
For example, the MPEP cites cases where “having” has been interpreted differently:
- In Lampi Corp. v. American Power Products Inc., “having” was interpreted as open terminology.
- In Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., the term “having” in the transitional phrase did not create a presumption that the body of the claim was open.
This variability in interpretation underscores the importance of clear and precise language in patent drafting and the need for careful analysis during patent examination and litigation.
To learn more:
Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
To learn more:
Patent Procedure (6)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.
These phrases determine whether a claim is open-ended or closed to additional elements.
The interpretation of these phrases can significantly impact the breadth of patent protection and how the claim is interpreted during patent examination or litigation.
To learn more:
Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.”
The significance of transitional phrases includes:
- Determining claim scope: They indicate whether the claim is open-ended or closed, affecting what elements can be included in the claimed invention.
- Infringement analysis: The choice of transitional phrase impacts how potential infringement is evaluated.
- Patentability assessment: Examiners use transitional phrases to understand the boundaries of the claimed invention when comparing it to prior art.
For example, the phrase “comprising” in “A composition comprising X, Y, and Z” allows for additional, unrecited elements, while “consisting of” in “A mixture consisting of A and B” excludes any elements not specified.
Understanding and correctly using transitional phrases is essential for patent drafters, examiners, and litigators to accurately define and interpret the scope of patent claims.
To learn more:
How does “having” function as a transitional phrase in patent claims?
The transitional phrase “having” in patent claims can function in different ways depending on the context:
- Open-ended transition: “Having” is generally interpreted as an open-ended transition, similar to “comprising,” unless the specification or other circumstances suggest otherwise.
- Closed transition: In some cases, “having” can be interpreted as a closed transition, similar to “consisting of,” if the intrinsic evidence clearly indicates that intent.
According to MPEP 2111.03:
“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended.“
When interpreting claims with “having” as a transitional phrase, examiners and practitioners should carefully consider the specification and prosecution history to determine the intended scope.
To learn more:
The interpretation of other transitional phrases like “having” in patent claims depends on the context and the specification. The MPEP states, Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended.
This means that unlike the more standardized phrases like “comprising” or “consisting of”, the interpretation of “having” can vary. It may be interpreted as open-ended (similar to “comprising”) or closed (similar to “consisting of”) depending on the specific language in the specification and the overall context of the invention.
For example, the MPEP cites cases where “having” has been interpreted differently:
- In Lampi Corp. v. American Power Products Inc., “having” was interpreted as open terminology.
- In Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., the term “having” in the transitional phrase did not create a presumption that the body of the claim was open.
This variability in interpretation underscores the importance of clear and precise language in patent drafting and the need for careful analysis during patent examination and litigation.
To learn more:
Yes, the interpretation of transitional phrases in patent claims can be significantly affected by the specification. The MPEP 2111.03 emphasizes the importance of considering the specification when interpreting transitional phrases:
“The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.”
Key points to consider:
- Explicit definitions: If the specification explicitly defines a transitional phrase, that definition controls.
- Context clues: The specification may provide context that influences how a transitional phrase is interpreted.
- Ambiguous phrases: For phrases like “having,” the specification is crucial in determining whether it’s used in an open or closed sense.
- “Consisting essentially of”: The specification helps identify what constitutes the “basic and novel characteristics” of the invention.
For example, if a claim uses “comprising” but the specification consistently describes the invention as excluding certain elements, this context might narrow the typically open-ended interpretation of “comprising.”
When drafting or interpreting patent claims, it’s essential to carefully consider how the specification may impact the meaning of transitional phrases to ensure accurate claim scope interpretation.
To learn more: