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.
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.
Join the Discussion
12 comments so far.
CuriousFebruary 16, 2016 04:43 pm
It would be nice if at least one SCOTUS actually had a basic literacy in science. Really, when you think about it, it is outrageous that a society that is controlled and dominated by science is run by illiterates.
While I don’t know his technical background, I do know that Sri Srinivasan argued a patent case before the Federal Circuit that involved semiconductors. That, in itself, separates Srinivasan from almost all possible candidates.
While I would like to have a Justice with some technical background, the reality of the circumstances is that there are far more politically important litmus tests. At best, what I’m hoping for is someone who at least respects patent rights and patent law and doesn’t treat intellectual property as “gobbledygook.”
Night WriterFebruary 16, 2016 01:36 pm
It would be nice if at least one SCOTUS actually had a basic literacy in science. Really, when you think about it, it is outrageous that a society that is controlled and dominated by science is run by illiterates. It makes it clear that the powers that be want ignorant slaves appointed to the SCOTUS. People like Ginsburg and her ignorant statements about patents not being for controlling human behavior evinces such an ignorance of technology and information processing machines that she should be impeached or at least shamed into resigning. But, in this upside down world of ours, the little justices think they are just the smartest and greatest things on the earth. It is really weird that the less respect the average person has for the justices (which is very low right now), the more the justices admire themselves. Bizarre world.
Night WriterFebruary 14, 2016 08:40 pm
Great post Curious. Really crazy that the patentability of “Information Age” innovations is dependent on the whims of the justices.
CuriousFebruary 14, 2016 07:30 pm
That is huge. It will give the liberal judges a majority.
Many can debate how his replacement will impact other aspects of the law (for better or for worse). However, in the context of patent law, I will always remember Scalia’s refusal to join the majority as to Parts II-B-2 and II-C-2 of the Bilski v. Kappos decision.
Part II-B-2 includes language such as: “this fact does not mean that unforeseen innovations such as computer programs are always unpatentable,”the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals,” “[t]t is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection.”
Part II-C-2 includes language such as: “the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.”
While I have not seen any such assertions yet, I suspect that some may opine that Obama will nominate an “anti-patent” justice so as to drive a stake into the viability of patents as an asset class. While I cannot deny that such a “litmus test” is possible, my strongest suspicion is that a candidate’s views on a great many other topics will be given (much) more weight.
Although polar opposites in almost all respects, I suspect Scalia and Justice Douglas (of Benson fame (or infamy)) shared a common distrust of high technology and the unique bargain that was created by the US Constitution (i.e., the rewarding of an individual who discloses their invention to the public in exchange for a limited exclusive right to that invention). Article I, Section 8, Clause 8 (i.e., the Copyright or Patent clause) sticks out in its discussion of creating exclusive rights to an individual, and many judges (not just at the Supreme Court) seem to have a problem with that.
While we can debate on whether the next justice to the Supreme Court (depending upon who is confirmed and whether Obama or the next President does the nominating) will give patents, as property, their proper due respect, I do believe that the next justice will have a greater understanding of technology (and its impact on society and business) than Scalia. That, in itself, is probably a good thing.
Night WriterFebruary 14, 2016 05:17 pm
@5 Paul, yes you are right. What was I thinking.
AnonFebruary 14, 2016 04:52 pm
Mr. Morgan @ 4.
I do not see the “destruction” that you speak of.
There remains a clear difference.
Perhaps you can explain why the fact that there remains a clear difference nonetheless is the “destruction” that you speak of?
A Rational PersonFebruary 14, 2016 11:45 am
It also appears that one of the leading candidates whom Obama will try to appoint may actually have patent litigation experience.
“[Sri] Srinivasan was also a law clerk to Supreme Court Justice Sandra Day O’Connor, who was a 1981 appointee by Republican President Ronald Reagan and is now retired. After his clerkships, Srinivasan served as a corporate litigator at O’Melveny & Myers and then worked in the office of the U.S. Solicitor General from 2002 to 2007.”
I found the following Fed Circuit case with Srinivasan is listed as one of the attorneys for Hynix:
PAUL MORGANFebruary 14, 2016 09:31 am
N.R. The Phillips decision was an en banc Fed. Cir. decision, not a Sup. Ct. decision.
P.S. The Fed. Cir. has just handed down a decision destroying one of the Cuozzo cert petition [and amicus] arguments, about an alleged difference in scope of BRI. See the case report on Scott’s “Post-Grant” blog.
Night WriterFebruary 13, 2016 05:25 pm
US Supreme Court Justice Antonin Scalia dead at 79
That is huge. It will give the liberal judges a majority.
Night WriterFebruary 13, 2016 05:19 pm
And notice that so far I have gotten everyone of these right. That is because I look the foul creatures in eye and figure out what is going on in their minds (which according to Ginsburg and Stevens is somewhere in the spirit world.)
Anyone else want to take a guess how it will turn out?
Night WriterFebruary 13, 2016 05:17 pm
Not committed yet to my prediction, but I am starting to think the SCOTUS is going to reverse the Fed. Cir. on BRI for IPRs. My guess is that they will want their precious Phillips followed. What a joke the SCOTUS is. They have eviscerated KSR with Alice and Phillips with Alice, but they pretend that Alice is Constitutional. What a joke this country has become. The SCOTUS is no better than the police in the youtube videos beating people because they didn’t do what they were told to do. Notice that the police don’t see their job as enforcing the law but getting the behavior out of people they want. So–as is typical–the corruption starts at the top. Here we have a SCOTUS that has no regard for the Constitution just as the bad police have no regard for the law.
AnonFebruary 13, 2016 02:41 pm
The following statement is an assumption that is well worth challenging:
“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.”
Examination should be aimed at the same target NOT some unspecified larger target in the “hopes” that because something less than what an applicant has a right to is finally allowed through, then that which is allowed through will have (magically?) some “properly sized” aspect to it.
This “forgiveness” for a guess at the point of examination is just being lazy.
The aim should be for a consistent interpretation throughout the process – which would allow the courts to put more faith in the examination process itself.
Right or wrong, THEN if there are indeed problems with granted patents, then the emphasis on patent improvements would also (finally) be put where that emphasis should have been all along – NOT on some attempted band-aid of post grant RE-DO, but on the examination in the first instance.
Would this make it more difficult to have a patent be “rubber stamped” through?
But I see nothing wrong in the process being tougher – but being fair in the first instance (as opposed to a sense of rubber stamping Reject Reject Reject).
Tough and fair is not easy. But the “easy way” – in either direction – only asks for additional problems.