Construction, or what is it and what does it do?

When I was studying for FD4 back in 2020, a friend of mine put me in touch with a very friendly FD4 examiner who kindly provided me some advice for the exam. One of the tips he gave me for construction was to look at each feature and think ‘what is it and what does it do?’. Acknowledging the obviousness of the point, he was of the opinion that not enough people put the necessary information down on the page.

‘What is it and what does it do?’ does quite nicely summarise how to perform construction, I feel. However, to understand the difference between a passing construction answer and one which is unlikely to attract marks some exemplification is perhaps warranted.

What is the UK approach to construction?

In Catnic Components Ltd and another v Hill and Smith Ltd, Lord Diplock stated:

“A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge”

This idea of purposive construction is established in UK law, and it means that claims are not to be taken literally, but instead they should be interpreted by understanding their intended purpose. In the case of patents, that is to try and interpret the claims based on what the skilled person would understand the patentee to mean. Claims are to be interpreted with reference to the specification. Kirin-Amgen v Hoechst further solidified this approach.

In Eli Lilly v Actavis, Lord Neuberger stated that a patent is interpreted on the basis that it is addressed to a person or group of persons who is or are likely to have a practical interest in the claimed invention, i.e. through the eyes of a person or persons skilled in the art. This case obviously established a doctrine of equivalents for infringement, which I’ll discuss in more detail in my article covering that section of the paper.

Let us consider the phrase ‘means to releasably secure the item of outerwear to the user’ from the 2019 FD4 paper, acknowledging that you will need to construe every feature, though some will not have a lot for you to say.

What does a bad answer look like?

Bad answers provide no explanation of how a feature is to be construed, nor provide any justification even though it is available.

When I was failing FD4, I was being brief, pointing to areas of the specification without comment.

I might say ‘means to releasably secure = a zip (p.7l10)’. This is unduly narrow, provides little explanation for the construction, and merely picks an example from the specification. It sort of looks like what the mark scheme might put As stated in the 2024 examiner’s report, the mark scheme is not a model answer.

What does a good answer look like?

A good answer considers what is disclosed in the specification about said feature, and then combines that information to come up with a sensible construction which is clearly stated. A good answer may look as follows:

‘The item must include a fastening mechanism that can be secured and released to attach it to the user’s torso. This may involve a zip (p7l10), but other closure methods are clearly anticipated (e.g., “otherwise closed” p6l22).”

In the above answer, the construction of the feature is clearly given in the first sentence. Then, with reference to the specification, commentary and explanation on the breadth of the feature is also given.

Turn the handle, and then apply it

Repeat this process for each feature of the claims, providing a summary of it is being interpreted, and then explaining why with reference to the specification. You may find it more natural to first discuss what the specification discloses and THEN summarise how you are interpreting the feature in light of that disclosure. The point is that you need to do both, for most of the features. This is what I tried to do the year I passed. I would state what the features was, and what its purpose was, with reference to the specification.

So that’s my summary - Firstly, what does the specification say? As such, what does this feature cover.

Recall that once you have your construction, you must reference it through the rest of the paper, and particularly in the novelty and infringement sections. Remember to do this and do not slip back into any kind of literal interpretation or a construction which is contrary to your own earlier analysis. When I sat the exam, I kept my construction pages to the side and used them to write my further sections.