{"id":14057,"date":"2019-08-07T08:42:31","date_gmt":"2019-08-07T03:12:31","guid":{"rendered":"http:\/\/localhost\/one\/sinapse-blog\/?p=14057"},"modified":"2025-06-25T15:15:43","modified_gmt":"2025-06-25T09:45:43","slug":"claim-drafting-transitional-phrases-patent-law-india","status":"publish","type":"post","link":"https:\/\/www.bananaip.com\/intellepedia\/claim-drafting-transitional-phrases-patent-law-india\/","title":{"rendered":"Claim Drafting – Transitional Phrases"},"content":{"rendered":"

This post was first published on July 17, 2014.<\/span><\/span><\/p>\n

A transitional phrase is a part of the claim that connects the preamble and the body. The Transitional phrase determines as to whether a claim is \u201cOpen\u201d \u201cPartially Open\u201d or \u201cClosed.\u201d<\/span><\/p>\n

Open Claim<\/strong><\/span><\/p>\n

An Open claim includes additional unrecited elements i.e., if a claim, which is Open, recites elements A, B, C and D, then an article which includes elements A, B, C, D and E infringes the Open claim irrespective of the fact that the article has an extra element E which is not recited in the Open claim.<\/span><\/p>\n

The term \u201ccomprising\u201d in a claim makes the claim Open.<\/span><\/p>\n

In, Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed. Cir 2005), a famous and much talked about case, the claim at issue recited \u201cA safety razor blade unit comprising a guard, a cap, and a group of first, second and third blades. \u201d The accused infringing product included four blades. The court said that the word \u201ccomprising\u201d makes the claim Open and hence, the scope of the claim encompasses all safety razors satisfying the elements set forth in the claim thus concluding that the accused product infringed the claim.<\/span><\/p>\n

In another case, Power MOSFET Techs., LLC v. Siemens AG., 378 F.3d 1396, 1409 (Fed. Cir. 2004), where the term \u201ccomprising\u201d was used as a transitional phrase, the claim element required a contact layer contacting with all the first and second semiconductor regions to form an interface. One of the issues here was to determine whether \u201ccontacting\u201d required actual physical contact or whether electrical contact would suffice. It was agreed that the word \u201cinterface\u201d used in the claimed element required physical contact. The patentee argued that the use of the term \u201ccomprising\u201d as a transitional phrase signified that different forms of contact could be allowed and hence electrical contact would meet the claim term. However, the court said that using the term \u201ccomprising\u201d as a transitional phrase does not remove the limitations that are present in the claim.<\/span><\/p>\n

Terms such as \u201chaving,\u201d \u201cincluding,\u201d \u201ccontaining\u201d and so on are mostly being used as alternatives to the term \u201ccomprising.\u201d Although, there are some case laws in which it was said that the words such as \u201cincluding\u201d and containing\u201d are synonymous with the word \u201ccomprising\u201d it is almost always recommended that the word \u201ccomprising\u201d be used as a transitional phrase if one intends to make the claim open.<\/span><\/p>\n

Partially Open Claim<\/strong>\u00a0<\/strong><\/span><\/p>\n

A partially open claim, like an Open claim, includes additional unrecited elements, but such additional unrecited elements do not materially affect the basic and novel characteristics of the claimed invention. The Partially Open claim defines a middle ground between completely open and completely closed claims.<\/span><\/p>\n

The term \u201cconsisting essentially of\u201d in a claim makes the claim Partially Open<\/span><\/p>\n

In In re De Lajarte<\/em>, 337 F.2d 870 (C.C.P.A 1964), the invention was directed to improving electrical insulation characteristic of a glass. The claim used the term \u201cconsisting essentially of\u201d as the transition phrase and set out composition of many compounds. The applied reference, in addition to the compounds, had sulfur and carbon. The court held that the reference did not map onto the claimed invention as the Applicants had emphasized the fact the claimed invention gave improved electrical insulation.<\/span><\/p>\n

In In re Janakirama Rao, 317 F. 2d 951 (C.C.P.A 1963), the claim at issue was directed to an optical glass consisting essentially of up to 75% cadmium oxide, 20-95% bismuth and 0.5 to 20 % silica. The applied reference(s) disclosed optical glass having the compounds as mention in the claim. The applicant argued that the transition phrase \u201cconsisting essentially of\u201d distinguished his claim over the applied art. The court said that the only change allowed by using such transition phrase was the inclusion of ingredients, which would not materially affect the basic and novel characteristics of the appellant\u2019s composition as defined in the claim. The claim rejection was upheld.<\/span><\/p>\n

Closed Claim \u00a0<\/strong><\/span><\/p>\n

\u201cClosed\u201d claim, as opposed to the Open claim, has restricted scope i.e., if a claim, which is \u201cClosed\u201d recites elements A, B, C and D, then an article which includes elements A, B, C, D and E will not infringe the \u201cClosed\u201d claim.<\/span><\/p>\n

The term \u201cconsisting of\u201d in a claim makes the claim Closed.<\/span><\/p>\n

Some Pointers<\/strong><\/span><\/p>\n

    \n
  1. If the subject matter being claimed is directed to mechanical and\/or electrical\/electronics, using the transition phrase \u201ccomprising\u201d is strongly recommended;<\/span><\/li>\n<\/ol>\n
      \n
    1. Try and avoid using the terms \u201chaving,\u201d \u201ccontaining,\u201d \u201cincluding\u201d and the like as much as possible;<\/span><\/li>\n<\/ol>\n
        \n
      1. If the subject matter being claimed is directed to chemical art or biotechnology, considering using the transition phrase \u201cconsisting\u201d or \u201cconsisting essentially of\u201d;<\/span><\/li>\n
      2. While using \u201cconsisting essentially of\u201d consider additional unrecited elements which materially affect the basic characteristics of the claimed invention.<\/span><\/li>\n<\/ol>\n","protected":false},"excerpt":{"rendered":"

        This post analyses transitional phrases in claim drafting, examining their impact on whether a patent claim is open, partially open, or closed. It references key case law and offers practical guidance for selecting appropriate transitional language in different technical fields.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":66,"footnotes":""},"categories":[6,14],"tags":[165,10551,1837,10550,10552,1450,50,3515],"class_list":["post-14057","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-patents","tag-claim-drafting","tag-closed-claim","tag-indian-patents","tag-open-claim","tag-partially-open-claim","tag-patent-claims","tag-patent-law","tag-transitional-phrases"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/14057","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=14057"}],"version-history":[{"count":3,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/14057\/revisions"}],"predecessor-version":[{"id":139945,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/14057\/revisions\/139945"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=14057"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=14057"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=14057"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}