We asked two different AI chatbots, “If you had to describe the profession patent attorney in 3 sentences or less, how would you describe it?” and both came up with slightly different, but pretty much similar answers.
Both focused on the technical (scientific) expertise combined with helping clients navigate the legal intricacies of patent law. However, neither mentioned anything about language! Ask any good patent attorney what the patent profession is about and although they will also talk about how it is about being the bridge between the science and the law, they will also tell you it is a language game. Sure, you need to understand the science, but understanding the science is not what makes a good patent attorney. Otherwise, anybody that is good at science would be a good patent attorney.
What makes a good patent attorney is they understand how to use language to their advantage. The pursuit of a patent is a game of finding the balance between language that is vague but still clear enough to get a patent granted that will be of value to one’s client. This balance is the core of effective patent claim drafting for broad scope.
Having to challenge yourself to find words that can be interpreted in more than one way so you’re not limiting yourself too much, but still cover the essence of the invention. I would even go so far as to say that patent drafting language has led to the “invention” of new words to cover a client’s innovations in broader terms or using vocabulary not found in daily use.
The Critical Difference: Comprising vs. Consisting Of
One famous example of a word that patent attorneys LOVE to (ab)use is “comprising”. When something “comprises” something it is open-ended, meaning it can include those features and others. To explain it more simply, if I were to say that my invention comprises a certain sequence in an antibody, it can be interpreted as the antibody having only that sequence OR the antibody having that sequence as part of its full sequence. This ambiguity is what makes for broad patent claim scope.
A Board of Appeal from the European Patent Office (EPO) actually judged earlier this year that if you only have the phrase “comprising” in your text and do not mention the phrase “consisting of” that there is no basis to limit your scope from “comprising” to “consisting of” (decision T 0345/24 for those interested).
The Board decided that the amended claims were not allowable due to a lack of support in the original text—a violation of Article 123(2) EPC, or EPO added matter rules. The mere presence of examples demonstrating an invention that only consisted of the parts claimed was not enough to justify amending the claim from the broad “comprising” to the narrow “consisting of.” This case is a crucial reference point for the question of comprising vs consisting of at the EPO.
For now, we will have to wait and see how this decision will shape future case law, but it is safe to say that it’s more important than ever that patent attorneys pay attention to what they put in the Description of their patent applications. To be 100% safe, always mention that an invention can also “consist of” particular parts/features!
The Value of Strategic Counsel
To conclude, patents are truly a language game and if you don’t play the game right, it might come back to bite you later. Patent attorneys are always walking the thin line between language that is just vague enough and language that is too vague, in order to get their clients the best possible protection for their inventions. This convoluted use of language is also the main reason why most “normal” people struggle to understand the text of a patent application.
Hiring a skilled patent attorney who can play the language game well may very well be the difference between a leverageable patent (a.k.a. a patent that is actually of value to you) and a literal patent (a.k.a a patent that covers only your literal invention), so choose wisely when you decide to invest in building your IP portfolio and your overall IP strategy.
At IFORI you will be in good hands! We strive to provide the best patent, and other IP & legal services, tailored to your company’s vision and mission. Feel free to reach out for any questions you may have!