Patent professionals are acutely aware of how seemingly small choices in wording can have profound impacts on the interpretation of claims. One such term that has garnered attention over the years, and continues to be relevant, is “provided.”

Historically, claims have often been drafted in forms such as “providing element A” or “element B is provided on element A.” While these phrases may appear to be an unusual choice to some, they remain a familiar structure in patent claim drafting. What some may overlook is how the use of “provided” can blur the lines between structural elements, method steps, or even intended use—each of which carries different implications for patentability and infringement analyses.

In a recent case, claim language of the form “provided directly between” in a system claim became the center of a dispute. Appeal 2024-001839, Application 14/912,702. The examiner contended that this phrasing was merely indicative of intended use and, therefore, non-limiting. While this interpretation was initially supported by the RQAS and another supervisor, the Patent Trial and Appeal Board (PTAB) ultimately disagreed, finding that the claim language was in fact limiting and conveyed structural characteristics.

Claim 1 on appeal is provided below (emphasis added)

A field effect transistor, comprising:
a foundation layer;
a nitride semiconductor layer as an n-type channel, the nitride semiconductor layer consisting of a nitride semiconductor having a formula of In xGa yAl zN where x, y, and z satisfy x+y+z=l.0, 0.3 ≤ x ≤ 0.99, and 0 ≤ z <0.4, wherein the nitride semiconductor is polycrystalline or amorphous;
an insulating layer provided on a surface of the nitride semiconductor layer; and
a gate electrode provided on and directly bonded to a principal surface of the insulating layer and facing the nitride semiconductor layer such that the insulating layer is interposed between the gate electrode and the nitride semiconductor layer, wherein the nitride semiconductor layer is provided on and in direct contact with the foundation layer and has a thickness of from 1 nm to 10 nm, wherein the foundation layer is an insulating substrate, or an insulating amorphous layer provided directly between a substrate and the nitride semiconductor layer, and wherein the field effect transistor is a depletion type field effect transistor.

The PTAB exlpained their reasoning as follows (internal citations omitted):

The Examiner finds that the aforementioned limitations “are process limitations which would not carry patentable weight in this claim drawn to a structure, because distinct structure is not necessarily produced.” In response, Appellant argues that the Examiner’s interpretation that the aforementioned limitations are process limitations is incorrect. The so-called ‘process’ limitations – presumably the phrase ‘provided directly between’ – are merely relational requirements between various elements or components that must be met.” We agree with Appellant. As noted by Appellant, the claimed “provided directly between” is merely a relational limitation that should be given patentable weight. Because the Examiner erroneously finds that this recited relational requirement should not be given patentable weight, we find that the Examiner has not properly interpreted claim 1. As a result, the Examiner has not sufficiently shown that the cited art, particularly Lal, teaches or suggests an insulating substrate provided directly between a substrate and the nitride semiconductor layer, as recited in Appellant’s claim 1.

This example serves as a reminder to patent prosecution professionals: examiners are constantly looking for opportunities to narrow claims, and/or to treat elements as non-limiting, especially in light of shifting trends in claim interpretation. In the case above, while the applicant was able to secure a favorable ruling, the fact that the examiner's position was supported through multiple review levels signals that other examiners may attempt similar strategies in the future.

One possible takeaway is that patent professionals should be skeptical when it comes to traditional use of claim language. Just because a term or phrase like “provided” has been commonly used in the past without issue does not mean it will always be interpreted in the way you intend, or that it aligns with how modern examiners view claim language. The unpredictable nature of litigation and prosecution means that patent professionals may consider closely examinng claim language, even when it meets with tradition.

Some Tips :

1. Be on the Lookout for Structural vs. Method Elements showing up when unintended: When drafting claims, be careful to consider whether a term is intended to describe a structural element or a method step, and what it is actually describing. Ambiguous language that could be interpreted as either may cause unexpected issues.

2. Be Mindful of “Intended Use” Pitfalls: Terms like “provided” may seem innocuous but can open the door to arguments that certain claim limitations are non-limiting intended use. Ensure your language clearly conveys the function or structure, rather than how an element might be used.

3. Leverage Case Law: Stay updated on the latest PTAB decisions and court rulings regarding claim language. They offer valuable insight into how specific terms are being interpreted in real-world scenarios.

4. Anticipate Examiner Strategies: Examiners may attempt to disregard certain claim limitations as non-limiting. Ensure your choices anticipate this and preemptively block such interpretations.

5. Avoid Reliance on Tradition: Just because certain phrases have been used for decades does not mean today’s examiners will honor that tradition. Evaluate each term carefully in light of examination and litigation trends.

Provided your drafting considers these issues, you should be well-prepared to meet the challenges of prosecution.