The success or failure of a patent in court can depend entirely on the Court’s definition of a single word in the specification. Some words of course are more common and important in patent specifications than others, and established conventions grow up through case law concerning the way that a Court should define these words.
However, these accepted interpretations often vary considerably from one country to another.
One recent Federal Court case has highlighted a critical difference in how Australian courts define the word “comprises” compared to US practice, and has emphasised the importance of comprehensive preparation of the specification in the Australian context.
Established Australian Practice
It is well-established Australian patent practice to include a paragraph in a patent specification that explicitly defines the term “comprises”, and its variations, throughout the specification, as it is intended to be interpreted which is typically in an “inclusive” sense.
This definition, is designed to prevent a court from applying an exhaustive interpretation of “comprises” when used in describing the various features or steps which comprise the invention – in other words to prevent the court deciding that the invention ‘comprises’ of the listed features or steps only, to the exclusion of any other possible features or steps, and therefore unduly limit the scope of the patent’s claims.
This standard practice was a reaction of Australian patent attorneys to the “General Clutch” decision. In General Clutch v. Sbriggs (1997) the Federal Court of Australia, in consulting several dictionaries, decided that the term “comprising” was to be interpreted as limiting the claim in question to only having those elements explicitly recited following the word and no others.
Contrast to US Practice
Later, in Gambro v Fresenius (2004), the Australia Federal Court decided that the meaning and operation of “comprising” depended on the specific context in which it is used within the unique specification at hand.
This is unlike US patent practice, for example, where the terms “comprising of”, “consists of” and “consisting essentially of” and variations of these terms, have well-defined and universally understood meanings.
It is accepted US court practice that “comprising of” is to be interpreted as open-ended in that the claim may include additional elements to those listed. “Consists of” typically signifies a “closed-end” claim such that the claim is restricted to only those elements listed. “Consisting essentially of”, used typically in claims concerning a chemical invention, provides a middle ground between “comprising of” and “consists of” in which the claims may include other unlisted features or steps as long as they do not “materially affect the basic and novel properties of the invention”.
The recent Full Federal Court decision in Actavis Pty Ltd v Orion Corporation  FCAFC 121 has shed some further light on the interpretation of the term “comprising” in Australian claim construction, and highlighted the dangers of relying on the standard ‘comprises’ paragraph.
Orion Corporation, the patentee, alleged that by seeking to market pharmaceutical products including entacapone, levodopa and carbidopa, as indicated for management of Parkinson’s disease, Actavis Pty Ltd was threatening to infringe claims of their Patent no. 765932.
While discussing issues of claim construction the court delved into the operation of the word “comprises” in the following claim 17 of the patent in suit.
A method for preparing an oral solid composition comprising entacapone, levodopa, and carbidopa, or a pharmaceutically acceptable salt or hydrate thereof, wherein the method comprises
The patentee argued that “comprises” should be interpreted such that the claim included versions of the method where pharmacologically effective amounts of levodopa were added at step a and at step c, rather than only at step a as specified in the claim. The alleged infringer had sought to market products which used the former method.
The alleged infringer argued that the claim defines a process in which there is a single intended pharmacologically effective amount of each active agent and that this pharmacologically effective amount is added only at the designated process step specified in the claim.
The court held that while the use of “comprises” in the above claim did not necessarily exclude other additives, components, integers or steps, it could not be used as a means to “contort the claimed process into a substantively different process”.
In other words, the construction of the word “comprises” in the context of this claim “must yield to the direction that the intended pharmacologically effective amounts of each active agent must be added at the step in the process that is specified for that addition.”
The scope of protection was therefore considered by the court to be limited by the plain meaning of the claim with levodopa only being added in a pharmacologically effective amount in step a) and so, in this instance, infringement was not found.
It is clear that in Australia the simple inclusion of a standardised paragraph stating that the word “comprises” is intended to have an inclusive meaning will not function as a broad safety net. At best it may, in some instances, influence a court against taking a strictly narrow reading of the claim.
This case shows that while the “comprising” paragraph may be useful it is not a substitute for thorough drafting practice. Therefore, while in the U.S., for example, well accepted meanings of the terms “comprising of”, “consists of” and “consisting essentially of” can be relied upon, in Australia it is advisable to have included in the description all workable variations of additives, components, integers or steps defined in the claims in the body of the specification to help guide a court as to how the claims should be interpreted and avoid an unintended narrow reading.
If such an expansive description is not available then patentees run the risk of having a plain reading of the claim forced upon them.
For more information about patent protection in Australia, please contact us on +61 7 3011 2200 or firstname.lastname@example.org. You can also follow all of our IP updates at www.linkedin.com/company/fisher-adams-kelly.
 Depuy Mitek, Inc. v. Arthrex, Inc.,297 Fed. Appx. 995 (Fed. Cir. 2008), citing AK Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1239, 68 U.S.P.Q.2d 1280 (Fed. Cir. 2003).