During patent examination, pending patent claims are given the broadest reasonable interpretation that is consistent with the specification (i.e., the disclosure of the invention in the application other than the patent claims). This broadest reasonable interpretation of the claims is made as the claims would be understood by one of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).
The broadest reasonable interpretation standard is frequently referred to simply as BRI within the industry. The Patent Office applies the broadest reasonable interpretation in virtually all circumstances.* Whether the Patent Trial and Appeal Board (PTAB) should be using the broadest reasonable interpretation when it reconsiders previously issued patents in post grant proceedings will soon be considered by the United States Supreme Court. Notwithstanding, the focus of this article is not specifically to evaluate the merits of the Cuozzo appeal, but rather to generally discuss the broadest reasonable interpretation standard and what it means from an analytical perspective.
Claim what you disclose
Patent Office regulations require the patent claims to conform to the invention described elsewhere in the patent application, with the terms and phrases used in the claims finding support within the patent application so that the meaning of those terms in the patent claims may be understood by reference to the overall description. See 37 CFR 1.75(d)(1). Said another way, you cannot claim something that you have not disclosed elsewhere in a patent application.
Applying the broadest reasonable interpretation of patent claims during the patent examination process, which is referred to as patent prosecution, makes sense given the role the patent examiner plays in determining whether to issue a patent in the first place.
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Claims cannot capture the prior art
After obtaining an understanding of what applicant invented, the examiner will conduct a search of the prior art and determine whether the invention as claimed complies with all statutory requirements. The two primary statutory stumbling blocks on the road to obtaining a patent are the novelty requirement, which is found in 35 U.S.C. 102, and the obviousness requirement, which is found in 35 U.S.C. 103. The novelty requirement seeks to determine whether anything that exists in the prior art is the same as the invention being claimed. The obviousness requirement seeks to determine whether any combination of prior art references that exist could add up to render the claimed invention trivial, or obvious.
As the patent examiner walks through the novelty and obviousness analysis the broadest reasonable interpretation standard informs their decision making from an analytic standpoint. If a patent claim would capture something that is in the prior art as infringing then the claim is said to be anticipated (i.e., not novel). If the patent claim would capture a routine combination of prior art elements as infringing than the claim would be obvious. While deciding whether the claim would capture the prior art as written the examiner gives the patent claim the most expansive reading consistent with the disclosure of the invention in the patent application.
The best example I can give to those new to the patent field in order to explain broadest reasonable interpretation is this: think of some kind of plastic wrap. Let’s say you want to cover a bowl so the food in the bowl stays fresh. You pull the plastic wrap from the roll, stretching it tightly over the top of the bowl. Conceptually this is exactly what patent examiners are doing with the prior art. The patent examiners are stretching patent claims, within reasonable limits, to see whether the claims overlap with the prior art. If a pending patent claim overlaps with the prior art it must be narrowed so that it does not so overlap.
Limitations on broadest reasonable interpretation
Notwithstanding, it is also important to note that the broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, under the broadest reasonable interpretation standard the meaning given to a patent claim term must ordinarily be consistent with the ordinary and customary meaning of the term. I say ordinarily because the patent applicant may be their own lexicographer, which means that the patent applicant has the ability to provide special definitions in the written portion of the patent application. If that happens then the definition provided by the patent applicant would take precedent – within reason of course. The Patent Office will not allow patent applicants to define terms in a way that is directly opposite to their plan meaning. But generally speaking, absent ridiculous game playing on the part of a patent applicant, the applicant-defined terms become primary and will inform the meaning of the terms above all other understandings.
Like so many times in patent law, the focus of the inquiry regarding the meaning of a patent claim is on what would be reasonable from the perspective of one of ordinary skill in the art. This is similarly true when an examiner applies the broadest reasonable interpretation standard to a patent claim.
Why broadest reasonable interpretation is contentious
The broadest reasonable interpretation has become contentious. We await the Supreme Court weighing in on the subject. Patent claims in issued patents are not given the broadest reasonable interpretation during federal court proceedings involving patent infringement and patent validity. Thus, the Patent Office does not interpret claims in the same manner as the federal courts.
Applying a different standard, namely the broadest reasonable interpretation standard, makes sense prior to the issuance of a patent because the patent applicant has the opportunity to amend the claims during prosecution. Giving a claim its broadest reasonable interpretation reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified, thereby reducing the likelihood that a claim will be viewed as covering the prior art.
The rational for the Patent Office applying broadest reasonable interpretation to review previously issued patents in post grant proceedings, which are alternatives to federal court litigation, does not make a lot of sense given that patents are statutorily supposed to be presumed valid. See 35 U.S.C. 282. Furthermore, although the statute says that patent owners have a right to file a motion to amend patent claims during post grant proceedings, see e.g. 35 U.S.C. 316(d), the PTAB allows the amendment in claims in virtually no circumstances. This combined with the fact that the legislative history of the America Invents Act (AIA) demonstrates the intent was to create an alternative to district court litigation leads many to believe the Patent Office should not be applying the broadest reasonable interpretation during post grant proceedings that are by their very nature an adjudicative process and not an examination.
* One situation where the Patent Office does not use broadest reasonable interpretation is when a reexamination of a patent is undertaken and reexamination will not be concluded until after the patent term has expired. However, this advanced topic goes beyond the scope of this article, which is intended to be a primer on the broadest reasonable interpretation standard.