The Software IP Report

How to Address Broadest Reasonable Interpretation in Ex Parte Patent Prosecution

By Charles Bieneman

Categories: The Claims Interpreted Report, The Software IP Report

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:

  1. Define claim terms in specification.
    –For terms not terms of art, consider defining in claims.
  2. Rely on implicit disclosure in specification.
  3. Plain and ordinary meaning is a fallback.
  4. Extrinsic evidence is a last resort.
  5. Avoid disavowels in specification and Office action responses.
  6. Don’t be afraid to construe the claims (especially in pre-appeals and even more especially in appeals).
    –Look first to the claim for the meaning of claim terms.
    –Rely on the Specification.