"Consisting Of": Claim Language In The Fight Against Climate Change

• Published date: 19 April 2022
• Subject Matter: Environment, Intellectual Property, Environmental Law, Patent, Climate Change
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr William C. Neer, Adriana L. Burgy, Caitlin E. O'Connell, Amanda K. Murphy, Stacy Lewis and Thomas L. Irving

Climate change has made companies consider the impact their businesses have on the environment. To help counteract the effects of transit, manufacturing, and general pollution, some companies are developing and investing in green, or ecofriendly, technologies. As just a few examples, some companies have begun creating compostable packaging, utilizing machines that pull pollutants out of the air, and even reconsidering the ingredients in their products (to create so-called "greened-down products"). Other companies may not do so, however, because they lack a proper incentive to invest in green technology. Patents, and the exclusionary rights they afford may provide that incentive.

A recent climate change presentation at the AIPLA Mid-Winter meeting sparked a conversation about how to structure patent claims to best define the scope of the invention. More specifically, how to determine which transitional phrase should be used to connect the preamble to the body of the claim. Each phrase carries with it a different scope and corresponding legal consequence. For example, "comprising" is an open-ended term that allows for inclusion of unspecified ingredients. "Consisting of," on the other hand, is a closed term, and courts have generally interpreted claims with this phrase to cover only the combination of specified components recited in the body of the claim, i.e., no more and no less.

This raises the question of whether "consisting of" claim language can be used in the fight against climate change? The answer may be "yes." Using "consisting of" claim language to eliminate or minimize ingredients in products may be a useful tool in patenting green technology and promoting the innovation needed to fight climate change.

"Consisting Of"

The meaning of "consisting of" with respect to the scope of a claim is best explained by example. If a claim is directed to a combination "consisting" of elements A and B, it is likely that the claim will not literally read on or cover the combination of elements A, B, and C. This would be true even if component C makes up only a small part of the combination as a whole, unless, for example, component C is a very small impurity that would be difficult to remove. A claim containing the "consisting of" transitional phrase is thus considered "closed" to additional, unrecited elements.

In Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004), the Federal Circuit held that the presumption that the term "consisting of"...