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ARTICLE · 16 MARCH 2020

Consisting Essentially Of Trouble

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The Federal Circuit decision in HZNP Medicines LLC v. Horizon Pharma USA, Inc. is a good reminder that even standard "patent lingo" can cause trouble down the line.

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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The Federal Circuit decision in HZNP Medicines LLC v. Horizon Pharma USA, Inc. is a good reminder that even standard “patent lingo” can cause trouble down the line. Now that the court has denied rehearing en banc (with Judges Lourie, Newman, O’Malley, and Stoll dissenting), practitioners should be aware of the risks of invalidity for indefiniteness that may arise from the “consisting essentially of” transitional phrase used in claim drafting. 

Transitional Phrases

In patent lingo, the “transitional phrase” is the term or phrase that links the preamble of a claim to the body of the claim. The USPTO’s Manual of Patent Examining Procedure explains the meaning of the three standard transitional phrases in MPEP § 2111.03. 

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