Using Broadest Reasonable Interpretation to Your Advantage in Patent Prosecution

Patent examiners often interpret claims more broadly than is reasonable to practitioners, but they lack tools to fight the interpretation. However, PTAB and Federal Circuit cases show limits to examiners’ use of BRI in patent prosecution. The rulings underscore the importance of making focused arguments highlighting the ordinary and customary meaning of claim terms consistent with the specification and drawings.

In In re Smith International Inc. (Fed. Cir. 2017), the Federal Circuit addressed how far the Patent Office may go when applying the BRI. The court concluded the PTAB’s construction was unreasonably broad, finding that “[e]ven when giving claim terms their broadest reasonable interpretation, the Board cannot construe the claims ‘so broadly that its constructions are unreasonable under general claim construction principles.’” The court provided guidance on the proper inquiry for using BRI.

This case and others show how patentees and their counsel should focus on the plain and ordinary meaning of claim terms against the patent specification.

Listen as our authoritative panel of patent attorneys examines the BRI standard and how it is being applied. The panel will also discuss the recent Federal Circuit decisions and offer practice tips for claim drafting.

1. BRI standard and its application
2. PTAB and Federal Circuit decisions
3. Practice tips for claim drafting

The panel will review these and other high priority issues:

• What guidance do Federal Circuit and PTAB decisions give patent counsel on the application of BRI?
• What arguments are useful in overcoming patent examiners’ unreasonable claim interpretations?
• Why is defining claim terms in the specification and using the definitions critical?
• How can patent counsel distinguish cases where extrinsic evidence has been used to supplement the specification? If and when should extrinsic evidence be used?