It is common practice for Australian patent attorneys to insert a ‘comprising statement’ into the description of a patent specification to indicate that the word “comprising” in the claims is to be interpreted in an inclusive sense since the term” has been interpreted very restrictively in some decisions of the Federal Court of Australia and the Australian Patent Office.
In this article, patent attorney Dr Megan Cole discusses how far a ‘comprising statement’ can push the inclusive boundaries.
Boehringer v Zoetis
The appropriate construction of “comprising” in a claim where the specification includes a comprising statement is revisited in Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC (‘Boehringer’),[1] with Zoetis Services LLC (the Respondent/Cross-Appellant) submitting that the word neither requires nor excludes additional integers from inclusion within the subject of the claim,[2] and Boehringer (the Appellant/Cross-R) counter-arguing that an interpretation of this nature fails to delineate the scope of the claimed monopoly.[3]
As Zoetis argues, additional integers may be encompassed by a claimed invention “comprising” stated integers if the inclusion would capture an alleged infringement[4] but not if an (arguably) identical inclusion would lead to claims falling afoul of s 40 of the Patents Act.[5] In contrast to this seemingly ‘have your cake and eat it, too’ type approach, Boehringer posits that where an inclusive construction of “comprising” is warranted,[6] such as in the contested applications, the scope of inclusivity incorporates (at least) each additional integer stated in the appended claims.[7]
Thus, Rofe J endeavours to address the following two issues regarding appropriate construction of the word “comprising” in the context of a patent claim:
- what factors contribute to “comprising” having an inclusive construction; and
- when applicable, how far an inclusive construction pushes the boundaries of a claimed monopoly.
Regarding these issues, Rofe J embraces an earlier statement of the Full Court,[8] namely, that the presence of a “comprising statement” (i.e., a definition that “comprising” includes stated integers but does not exclude other integers) in the specification ‘cannot contort the claimed process into a substantively different process … [or] give the word “comprise” and its variants an unbridled operation’.[9]
That is not to say that a “comprising statement” cannot support inclusive construction of the word “comprise” (and its variants), only that the statement alone does not mandate an inclusive construction nor afford limitless scope to the claimed monopoly. Indeed, Rofe J indicates that an inclusive construction of “comprising” has merit in such cases when the construction:[10]
- is supported in the context of the specification as a whole,
- does not yield a claim with infinite scope, and/or
- does not ‘contort the claim into a substantially different invention’.[11]
Moreover, Rofe J indicates that where “comprising” is justifiably given an inclusive construction, the scope of the monopoly should be established using a commonsense approach.[12] Any additional integers which are not excluded from the claim should be determined in the context of the claim itself, as well as in the context of the specification as a whole. In other words, the scope of the claimed monopoly is subject to consideration such as:
- the disclosures within the speciation which are directed to working the invention or achieving an advantageous property,[13]
- limitation(s) recited in the claim “comprising” stated integers and which the integers are subject to,[14]
- any inessential elements which the skilled person would ordinarily use to work an invention of the same nature as that claimed.[15]
Notably, whether the integers of appended claims fall within the scope of the claimed monopoly is also subject to the foregoing considerations and not, as Boehringer suggests, implicitly encompassed in the claimed monopoly ‘in accordance with orthodox claim construction’.[16] Consequently, in Boehringer the inclusive, yet bounded, construction of “comprising” influenced which claims were successfully opposed on the grounds of lack of support[17] and lack of disclosure.[18] Specifically, “comprising” being found not to encompass the features of select dependent claims enabled the main independent claim to stand (on those grounds at least), while the select dependent claims fell.
Final Comments
This recent consideration of the word “comprising” may not alter standard Australian practice in terms of recommending a ‘comprising statement’ be included in a specification, but it does suggest that such recommendations should also present the caveats of relying on a comprising statement to provide the intended scope of protection, particularly in cases where support or appropriate context may preclude inclusive construction or restrict inclusive construction beyond that otherwise considered ‘in accordance with orthodox claim construction’.[19]
Footnotes
[1] Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119 (‘Boehringer’), on appeal from Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2020] APO 40.
[2] Boehringer (n 1) [192]–[193].
[3] Ibid [203].
[4] Ibid [194].
[5] Ibid [196] citing General Clutch Corporation v Shriggs Pty Ltd (1997) 38 IPR 359, [376]–[377]. Patents Act 1990 (Cth).
[6] Boehringer (n 1) [199], in view of Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) (2020) 155 IPR 1 (‘Merck’).
[7] Boehringer (n 1) [200]–[202].
[8] Actavis Pty Ltd v Orion Corporation [2016] FCAFC 121 (‘Actavis’).
[9] Ibid [178] quoted in Boehringer (n 1) [230].
[10] Merck (n 6) (Burley J); Actavis (n 8) (Allsop CJ, Micholas and Yates JJ); Abbott Laboratories v Corbridge Group Pty Ltd (2002) 57 IPR 432 (Lee, Emmett, and Hely JJ); Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 (Allsop J, as his Honour was then).
[11] Boehringer (n 1) [234].
[12] Ibid [244].
[13] Ibid [239]–[244].
[14] Ibid [235].
[15] Ibid [247].
[16] Ibid [202], Boehringer citing Merck (n 6) [179].
[17] Patents Act (n 5) s 40(3).
[18] Ibid s 40(2)(a).
[19] Boehringer (n 1) [202].
