The language used in a patent claim can be a major factor in determining whether that claim survives a challenge. Understanding the implications of often-used phrases and how they align with a patent is key to adjusting an application and optimizing protection of valuable intellectual property. A recent case in which patent claim language was amended during prosecution illustrates the power of words.

Panitch Schwarze attorney Liliana Di Nola-Baron, Ph.D. recently authored an article in Law360 examining this case. The Federal Circuit sided with Eye Therapies, which had appealed a final written decision from the Patent Trial and Appeal Board (PTAB) rendering the company’s patent invalid. The patent claim originally used the word “comprising” to describe its components; when this original claim was rejected, Eye Therapies later amended it to the phrase “consisting essentially of.” While the PTAB asserted that this phrase permits inclusion of components not listed in the claim, as per its ordinary definition in patent law, the court found that the company’s arguments supported an atypical definition which narrows the scope of the claim.

When applying for patents or defending claims, practitioners must be careful with their language. Knowing the phrases used in the history of a claim, as well as the arguments used in support of that claim, will help patent holders craft a strategy that aligns with their goals.

Read the full article here: Eye Drop Ruling Clarifies Importance Of Patent Phrasing (Subscription is required.)