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Construing the Specification and Claims

Background

2.1 The patent when granted will only confer protection on the invention as defined by the claims, but the claims are interpreted in light of the description and drawings. Construction of claims is pivotal to any consideration of infringement and validity and to almost every aspect of examination including novelty, inventive step, searching of the claim and claim amendments.

2.2 In order to provide certainty for the public and patentees, there should be consistent construction of the claims of a patent specification, irrespective of the subject matter at hand. In an examination context, this might mean that the Examiner should avoid construing terms broadly for the purpose of novelty but narrowly for the purpose of support. In a broader perspective this means that the claims should be interpreted in the same way for both infringement and validity considerations.

2.3 From a practical point, Examiners may find the following tips helpful when construing a patent document:

(a) Read the claims before the description.

(b) Draw the invention from the definition given in the claims.

(c) Consult with other Examiners.

2.4 These techniques will particularly help to avoid introducing any “gloss” from the description and drawings (that is, reading limitations from the description and drawings into the claims that are not defined by the language of the claims themselves).