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Modified Date: 1 December 2016

2.11.2.3.4 "Comprises", "Includes", "Consists of" and "Contains"

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The word “comprises” may be interpreted differently in overseas jurisdictions. Therefore, many specifications include a ‘definition’ of ‘comprise’ or similar words to avoid unintended interpretations.  Consequently, examiners should evaluate the use of FERs accordingly.

“Comprises”, “Includes”

In Australia, the meaning of “comprise” (vis-a-vis whether or not it is exhaustive) is determined in accordance with the context of its use.  Thus, in Asahi v WR Grace 22 IPR 491 it was held that in the circumstances of that case "comprise" was being used exhaustively. The decision in NV Philips Gloeilampenfabriken v Mirabella International (1993) AIPC 91-025 appears to take a similar line. In General Clutch Corp. v Sbriggs Pty Ltd (1997) 38 IPR 359, after a review of the authorities and several dictionaries, the judge concluded that the normal linguistic meaning is that comprising means made up of, composed of, or constituted by the integers listed. In Fresenius Medical Care Australia v Gambro [2005] FCAFC 220, the Court found the word had a non-exhaustive meaning, particularly noting subsequent dependant claims which added extra integers.

Accordingly, the word "comprise" must be given an interpretation appropriate to the context of its use. In some situations, the word will clearly exclude the presence of additional elements, whereas in others the presence of additional elements will clearly not be excluded.

When "comprise" is used in a non-exhaustive sense, it would be expected that:

  1. the advantages of the invention would arise from the features specified (and not from unspecified features); and

  2. where an integer is said to "comprise" certain elements, those elements would normally (although not necessarily always) be the predominant feature of the integer.

Where "comprises" is replaced with "includes", care should be exercised regarding any consequential change of scope. The word "includes" would not normally suggest or require that the element is present in any significant amount, whereas "comprise" in the original context may require the element to be the primary constituent of the integer.

 

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“Consists of”

It is often stated that "consisting of" should be interpreted exhaustively (as in, "consisting only of"). However, it is rare for an applicant to deliberately intend to confine themselves in such a manner. Also, a strictly exhaustive interpretation would exclude (for example) the presence of any impurities in a chemical substance, or the presence of optional features. If, however, the intention resides in the absence of a feature, it would be appropriate to interpret this phrase as being exclusive of such features. “Consisting essentially of" should clearly be construed non-exhaustively (Atlas Powder Co. v ICI Australia Operations Pty. Ltd.  (1989) AIPC 90-587).

 

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“Contains”

The word "contains" was considered in NV Philips v Mirabella International (supra) to be susceptible of more than one meaning, in that its meaning may be exhaustive or non-exhaustive depending on the context. Accordingly, "contains" is subject to similar consideration to "comprises" as referred to above.

 

Note: In the case of a claim directed to a composition characterised only by a single component, the claim should be interpreted as including within its scope the component per se, regardless of whether the composition is defined as comprising, consisting, etc.

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