Patent examiners often apply seemingly irrelevant prior art with the blithe statement that a claim rejection is justified by a broadest reasonable interpretation of claim terms. I offer some tips on combating examiner abuses of broadest reasonable interpretation in this presentation, and in the accompanying paper, presented to the AIPLA’s Patent Law Committee at this month’s Annual Meeting in Washington, D.C.
Although the broadest reasonable interpretation (or “BRI”) can be more expansive than a claim construction in federal court, BRI nonetheless takes place under the familiar rubric of Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2005). With that in mind, here is a summary of some practice tips for minimizing the pain that USPTO patent examiners cause with BRI – see the linked-to documents for more explanation – the bolded points are my favorites: