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5.5.4.8 'Comprises', 'includes', 'consists of', and 'contains' in claims

Date Published

Overview

The terms ‘comprises‘, ‘includes’, ‘consists of’, and ‘contains’ can have an exhaustive or a non-exhaustive meaning. This section provides guidance on how we interpret these words in examination.

Note that these words may be interpreted differently in overseas jurisdictions. Therefore, many specifications include a dictionary and/or definitions of such words to avoid unintended interpretations. Consequently, examiners should evaluate the use of foreign examination reports (FERs) accordingly.

‘Comprises‘, ‘includes‘

In Australia, the meaning of ‘comprise‘ depends on the context of its use. That is, it is sometimes interpreted as exhaustive (the items listed are the only ones) and in other cases as non-exhaustive (there are other possible items that are not listed).

Accordingly, examiners must give the word ‘comprise‘ an interpretation appropriate to the context of its use. In some situations, ‘comprise’ will clearly exclude additional elements. In others, possible additional elements will clearly not be excluded.

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

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

  • where an integer ‘comprises‘ certain elements, those elements would normally (although not necessarily always) be the predominant feature of the integer.

If ‘comprises‘ is replaced with ‘includes‘, be careful about any resulting change of scope. The word ‘includes‘ does not normally suggest or require that the element is present in any significant amount, whereas ‘comprise‘ as originally used may require the element to be the main constituent of the integer.

On the question of whether the meaning of ‘comprise’ is exhaustive, outcomes in Australian courts include:

  • Asahi v WR Grace 22 IPR 491, it was held that in the circumstances of that case ‘comprise’ was being used exhaustively;

  • NV Philips Gloeilampenfabriken v Mirabella International (1993) AIPC 91-025, appears to take a similar line to Asahi v WR Grace;

  • 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'; and

  • 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.

‘Consists of‘

It is often stated that ‘consists of‘, '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).

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.

‘Contains‘

’Contains’ may be exhaustive or non-exhaustive depending on the context. This makes it similar to ‘comprises‘.

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.

Amended Reasons

Amended Reason Date Amended

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