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Due to a recent patent decision, the UKIPO has amended the Manual of Patent Practice (the “instruction manual for UK Patent Examiners”) so that the wording “adapted to” in a claim will be interpreted by UK Examiners as simply meaning “suitable for” – placing little in the way of a limitation on the scope of a claim.

Section 2.12.3 of the Manual for Patent Practice states :

2.12.3 In FH Brundle v Perry [2014] EWHC 475 (IPEC) the judge considered the meaning of the phrase “adapted to” in the claims, and held that:

“I accept that as a matter of ordinary English usage, ‘adapted’ carries a connotation of adaption or modification in design to achieve the purpose stated in the feature. However in my view… these [features] are to be construed such that they contain no subjective element. To my mind it is irrelevant where the designer started and what adaptations were made in the design process. Because these features must be assessed objectively, it seems to me that ‘adapted to’ and ‘adapted in use to’ mean the same thing as ‘suitable for’. In light of this it is unlikely that amendment of a claim to include the term “adapted to” would be sufficient to overcome a novelty objection to an earlier version of the claim which used the term ‘suitable for’.”

In the patent in question claim 1 recited :

  1. A bracket for securing a fence panel to a fence post
  2. the bracket being adapted to embrace a corner of a fence panel
  3. and comprising a main body having a rectangular central portion
  4. adapted in use to lie along the top of the panel
  5. and two contiguous triangular portions
  6. adapted in use to lie one each side of the panel
  7. with one apex adjacent the post and the other spaced therefrom,
  8. and flange means
  9. adapted in use to lie against and be attached to the post.

The claim was initially reviewed in a Patent Office Opinion, where the Examiner interpreted the words “adapted to” as meaning “specifically designed to”. In the court decision, Judge Hacon rejected this interpretation on the grounds that it implies that the structure of the features containing these terms is defined according to the subjective intent of the designer.

In the words of the judge, “Only the designer could know whether he was specifically designing something to achieve this or that purpose”.

The Judge went on to say, “I accept that as a matter of ordinary English usage, ‘adapted’ carries a connotation of adaption or modification in design to achieve the purpose stated in the feature. However in my view … these are to be construed such that they contain no subjective element. To my mind it is irrelevant where the designer started and what adaptations were made in the design process. Because these features must be assessed objectively, it seems to me that ‘adapted to’ and ‘adapted in use to’ mean the same thing as ‘suitable for’. I am reinforced in this view by the judgment of Birss J in Schenck (cited above) in which he found ‘constructed to receive’ had the same meaning as ‘suitable for receiving’. As in the present case the relevant claim was a product claim for a mechanical device: for fastening balancing weights to rotors.”

There is a possibility that the UK Intellectual Property Office is going too far in its interpretation of this decision, as the Judge also commented that “I do not say that in the context of other claims it will never be possible to discern a difference between ‘suitable for’ on the one hand and ‘adapted to’ or ‘adapted in use to’, or ‘constructed to’ for that matter, on the other. But I think in this claim the first three mean the same thing.”