An e-mail from a UK patent examiner prompted me to reconsider the U.S. Government’s brief in the Phillips v. AWH rehearing.
For those who have not followed this case, the Federal Circuit has decided to rehear the Phillips v. AWH in order to determine the proper method of construing claim language of a patent. The two major theories of claim interpretation involve (i) the use of dictionaries and (ii) the use of the patent documents filed by the inventor.
The government brief argues that dictionaries should not be a primary reference for claim construction, in part because dictionaries are not used by examiners during prosecution. This assertion by the government certainly overstates the facts. When an examiner starts at the PTO, they are given a copy of Webster’s. Examiners also regularly use www.Dictionary.com to find various definitions for terms. While it is true that the Examiner rarely explicitly relies on a dictionary in an office action, the definition of terms is always in the background. For instance, examiners often use the dictionary to examine the clarity of the claims and as a way to asses the scope of terms used in the application.
Although this discrepancy was not raised in any of the briefs, it may come up in oral arguments slated for Tuesday, February 8, 2004.
UPDATE I: L&C Law Professor Joseph Miller, in his recent article on the role of dictionaries, has noted that ‘[w]e know anecdotally that examiners sometimes cite and quote dictionary definitions in their interactions with patent applicants.’ Manuscript page 50. Miller and his co-author James Hilsenteger cite Cordis v. Medtronics, 339 F.3d 1352, 1359 (Fed. Cir. 2003), as a case where the examiner used the definition of the claim word ‘slots’ from Webster’s Ninth New Collegiate Dictionary to help explain to the applicant how a prior art reference showed the claimed structure.
UPDATE II: I received a comment from a former USPTO primary examiner who made several points:
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The example cited in Professor Miller’s article of an examiner citing a dictionary definition in an office action is the exception rather than the rule.
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The Office did not emphasize the use of dictionaries to assign meaning during training. (although dictionaries may have been mentioned in training sessions as ‘available sources for determining the meaning of a claim term’)
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Rather, examiners are primarily taught to give each claim term its "broadest reasonable meaning."
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"The examination process is so fast-paced that I believe examiners do not use any formal methodology when construing claims. Instead, an examiner relies more on intuition, on what a word or phrase means to him or her. If a word is foreign to an examiner, he or she would likely consult a dictionary, but only to get a "feel" for the word.
Field Reporter Needed: I am not going to be able to attend the Phillips v. AWH rehearing, but I would like to post an article on the oral arguments written by an attending patent attorney. Let me know if you would like to write a brief article (<750 words) on the topic for the Patently-O Blog. (We operate on same-day service, so you would need to write it within a couple of hours after hearing the arguments). You’ll get some good publicity — we have a fairly wide circulation with over 10,000 hits each week from people working in the patent field. (crouch@mbhb.com). Also, I would like to post an .mp3 file of the oral arguments if anyone would be willing to get the set of tapes from the clerk and convert them.