My customers are often confused by the words “patentability” and “patent infringements.” And sometimes they’re under the impression that one of the prerequisites of launching a new product is to get a patent.
While it is not necessary to apply for or have a patent before launching a product, patent infringement research is an important activity that should be undertaken to make sure your product does not violate an existing patent. In this context, it is also important to recognize that even if you have a patent issued for your product, you may still infringe on someone else’s patent, thereby preventing you from launching your product.
So, as a patent owner, what rights do you have? According to the U.S. Patent and Trademark office, it gives you the right to “exclude others from making, using, offering for sale, or selling your invention throughout the United States or importing the invention into the United States.”
Transitional Phrases & Patent Scope
Patent infringement occurs when you make, use or sell in the U.S. that which is set forth in the claim of an unexpired patent without the authority of the patent owner. This begs the question on how to determine if your product falls within the boundaries or the intended scope of an existing patent.
The scope of a patent can be affected by the transitional phrase that is used in the claims. To simplify these phrases for this discussion, there are three transitional phrases that are commonly used, each of which has a different scope.
- When the transitional phrase “comprises or comprising of” is used, it gives the claim its broadest scope. For example, if the claim is “a composition comprising of A+B+C” it would include the elements of A,B, and C but not exclude other components. To further illustrate this as an example, if a patent is issued to a composition that has A+B+C to give excellent hair condition, and you discover that adding element D gives your composition unexpected shine results, you may get a patent with A+B+C+D. However, since your composition has the elements of A,B and C of the first issued patent, you will not be able to make, use or sell your product that has A+B+C+D.
- Claims that have the transitional phrase “consisting essentially of” are narrower in scope than the one described above, and infringement is debatable. If, in the example above, element D is added to a composition of A+B+C, it may or may not infringe on the claims, depending upon the effect that element D has on the properties of the first invention. If the addition of element D altered the hair condition in a way that substantially changed the (claimed) condition of hair, then it would not infringe on the first patent.
- Claims that have the transitional phrase “consisting of” are the narrowest in scope. It is considered to be a closed-ended claim. If the patent is issued with elements A+B+C with a transitional phrase “consisting of,” then the addition of element D to this composition does not infringe on the first issued patent.
Read the claims very carefully before deciding whether or not your composition has the potential to infringe on someone else’s patent. Your product’s ability to launch depends on it.
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