LawProse Lesson #146: The IP bar’s special use of “comprise”

LawProse Lesson #146: The IP bar’s special use of “comprise”

The IP bar’s special use of comprise. In the best normal usage, comprise means “to be made up of exclusively.” But intellectual-property lawyers use it in a different sense, as a synonym of the nonexclusive word include. The United States Court of Appeals for the Federal Circuit long ago anointed this peculiar usage. Here’s what the authorities say:
  • “The transitional term ‘comprising’, which is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” Manual of Patent Examining Procedure § 2111.03 (8th ed. rev. 2012).
  • “[T]he use of ‘comprising’ suggests that additional, unrecited elements are not excluded.” CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005).
  • “A drafter uses the term ‘comprising’ to mean ‘I claim at least what follows and potentially more.'” Vehicular Techs. Corp. v. Titan Wheel Int’l Inc., 212 F.3d 1377, 1383 (Fed. Cir. 2000).
  • “It is well-established in patent law that the word ‘comprising’ serves as an open-ended transition element, preserving the possibility of claiming more than what is recited.” Loftex USA LLC v. Trident Ltd., 2013 WL 2050883 at *5 (S.D.N.Y.).
  • “‘Comprising,’ ‘containing,’ and ‘including’ all have the same meaning and can be used interchangeably, following the preamble. They mean ‘having at least the following elements’ . . . but also may include more elements or limitations.” Morgan D. Rosenberg, Patent Application Drafting 8-9 (2012).
In other words, an educated speaker of English might say, “Our faculty comprises thirty scholars with illustrious track records of published research.” To the general reader, this means that the faculty consists only of those thirty scholars. But if we apply the IP interpretation to that sentence, comprises would suggest that there may be others on the faculty as well — as if it were synonymous with the normal, nonexclusive use of include. We may bemoan this needless inconsistency between normal usage and IP usage, but it’s a well-established reality. So compose yourself. For further discussion: Antonin Scalia & Bryan A. Garner, Reading Law:The Interpretation of Legal Texts 132-33 (2012). 1 Stuart B. Soffer & Robert C. Kahrl, Thesaurus of Claim Construction 221-22 (2d ed. 2013). Thanks to Herbert J. Hammond.

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