The Unreasonableness of the Patent Office’s ‘Broadest Reasonable Interpretation’ Standard

Chris Cotropia (Richmond Law) and Dawn-Marie Bey (King & Spalding) have an interesting draft article out on the PTO’s “broadest reasonable interpretation” standard for interpreting claims during patent prosecution. The article notes that the increase in post-grant reviews (reexaminations) running concurrently with infringement litigation raises the stakes of the PTO’s standard.

From the abstract:

Although there has been much commentary on patent claim interpretation methodology in general, very little has been written about the unique interpretation approach the Patent Office employs. The courts, starting with the Court of Customs and Patent Appeals and continuing with the Federal Circuit, instruct the Patent Office to give every applied-for claim its ‘broadest reasonable interpretation’ (BRI) during patent examination. This Article explores this special standard and concludes that not only are the previously articulated rationales behind the BRI standard severely lacking, the standard is also contrary to both the patent statutes and the concept of a unitary patent system. The BRI standard additionally allows patent examiners to avoid difficult claim interpretation issues, leads to improper and uncorrectable denials of patent protection, and is incurably ambiguous.

Notes:

78 thoughts on “The Unreasonableness of the Patent Office’s ‘Broadest Reasonable Interpretation’ Standard

  1. “I have always thought that the last clause limited the breadth, but examiners just ignore it and the Board won’t address it.”

    We have had rotten luck in getting examiners to consider this, but in 11/125,254 the Board decision just came down addressing this clause and accepting the argument that the Examiner’s “broadest reasonable interpretation” was not consistent with the spec.

  2. Znutar makes a good point. It reminds me of the English rule, that terms in claims MUST be construed “purposively”, as if by the intended reader, the PHOSITA.

    Suppose (set aside obviousness considerations here) the claim is directed to some household object moulded from LDPE (low density polyethylene). Exr finds a prior art reference that discloses the same thing but moulded in HDPE. He argues that LDPE in the claim is vague enough to include HDPE, so the claim lacks novelty. Would the intended reader, the PHOSITA, find that position “reasonable”? I think not. Would a judge or a polymer-ignorant litigator find that “reasonable”. I think he would. What’s a poor PTO Examiner supposed to do then, to keep his masters (SCOTUS and the CAFC) happy?

    This is something the EPO doesn’t have to worry about of course, because there is no court sitting in judgement on the EPO, only EPO Boards of Appeal that are named “Technical” Boards of Appeal.

  3. “BRI is that of the claim, not the individual words of the claim. Trouble often arises when the examiner fixates on a particular word and applies the BRI to that word.”

    True, but how do you achieve that without giving each term (word or phrase) it’s broadest reasonable interpretation? In principle I’m OK with that, but in practice what’s “reasonable” is anything under the sun that the examiner can find in a quick key word search. The definition I seem to get for “reasonble” is “not expressly excluded.” “You didn’t expressly define ‘soluble’ and you certainly didn’t expressly exclude that which is insoluble, so this insoluble compound reads on your soluble compound limitation.”

    I think a better example of where words are treated under a test for the claim as a whole has to do with intended use. “That’s not a structural limitation, that’s intended use.” The whole line of cases has to do with statements made in the preamble about what the apparatus as a whole is for. But somehow it winds up being applied to limitations in the body of the claim like “configured to engage with a sproket.” Such a limitation won’t get considered because there seems to be a per se rule that anything after “configured” can be ignored as an intended use. In any event, there’s supposed to be some analysis given as to why language can be ignored for describing intended use, but good luck getting that. Interpret it under 112 6th if you must, but don’t outright ignore the limitation.

  4. BRI is that of the claim, not the individual words of the claim. Trouble often arises when the examiner fixates on a particular word and applies the BRI to that word.

  5. An Examiner,

    I am interested in just what your interpretation of “hindsight recontruction” is.

  6. breadcumbs: “How is hindsight reconstruction generally proper? I am not asking about the ends, I am asking about the means.”

    I think we’re interpreting “hindsight reconstruction” to mean different things. In retrospect, my method for handling 112s is not at all hindsight reconstruction.

  7. Once you demonstrate that you are willing to actually THINK, MaxDrei, I may be inclined to explain a few simple matters to you.

    Until then, I may choose to simply place markers around your posts so that others do not “step in it”.

  8. Noise thanks but do me a favour will you. Check out reference 52 in the Shane Paper. The authority for what the EPO says is given as some US source. Can’t Shane quote from the EPO source where the US source sourced its statement of what the EPO’s position is? Meanwhile, I’m sceptical?

    Can you clarify? Would be grateful.

    Of course Shane doesn’t explicitly advocate Registration Only. Of course he doesn’t even come to the idea. It is just that, if he is against “administrative” examination of the validity of patent claims, how can he be at the same time in favour of pre-issue examination on the merits. I’m too thick to see it. But you can explain that simple matter to me, I’m sure.

  9. “but its arguments apply also to pre-issue examination on the merits.”

    Um, no Max, they do not.

    I see that you have applied the usual care and thought of your posting style (none) to your reading style. I would suggest that you re-read the Shane paper, especially the parts where he pans your beloved European system.

    Shane believes in (and provides the data and studies to support) a strong patent system and a strong presumption of validity – nowhere does Prof. Shane even come close to advocating a “Registration Only” patent system. Quite the opposite. Such blatant mischaracterization would end up getting you banned from the IPWatchdog site (like your idol 6), but here is mere fodder for today’s trainwreck.

  10. Thanks Interloper. I find interesting the juxtaposition of this thread and the one on Shane’s Paper on the idiocy of attempts by “administrative” authority to check the validity of any patent claim. The Paper is paid for by folks who want no post-issue opposition provisions in the Reform Bill, but its arguments apply also to pre-issue examination on the merits. I take it that Prof. Shane is advocating a “Registration Only” patent system.

    As somebody commented yesterday, or the day before, inventors want a free pass through to court (and retention of the “clear and convincing” standard for validity attacks) while at the same time crying for more “quality” from the PTO, expressed in the form of refusals of all the “cr8p” claims tendered by everybody else.

    Out of all this self-interest, the legislator has to figure out what’s best for the economy. Tough, when most every expert commentator is doing no more than grind his axe, and nobody can see what each commentator’s up to, pulling the wool over the eyes of the pols, except his fellow experts, who are themselves biassed.

    It was all so much easier back in the 1960′s, when the European Patent Convention was put together by the mainland European civil law lot and the common law English. Back then, patent law wasn’t sexy. The experts were left alone to get on with it. They had a model for post-issue handling of infringement disputes but that never made it to enactment because, even then, an English judge enjoining a factory in a continental European country, and putting people out of work, was highly political. That was a bridge too far, for the European legislator.

    I still think the EPC is a good model. So does the USPTO. I wonder what Mr Kappos thinks about it all.

  11. Max, your analysis is entirely correct. All of the problems stem from the absurd situation that in the US scope of the claim can vary between arguments on validity and infrignement.

    Mr Halling, virtually every country in the world has moved from a local novelty test to a universal novelty test for a very good reason. Modern communications (particularly now the internet) make a nonsense of a proposition that information in one country is not available in another. If you are doing some prior art research before you invent, wouldn’t you use google across the world?

  12. Breadcrumbs are you questioning the legitimacy of directed prior art searching, done with hindsight knowledge of the claimed subject matter, or maybe you are you questioning the legitimacy of arguing a combination of two prior art references, whenever that act is performed with hindsight knowledge of the claimed invention. Or are you accepting those two, but questioning the particular way in which our Examiner friend drafts a paragraph with blank spaces, searches, then fills in the gaps? It’s just that I’m just not quite sure at which point Examiner crosses the boundary and starts to perform illegitimate “hindsight reconstruction”, that’s all. I had naively thought that every Patent Office Examiner was unavoidably, helplessly and inevitably at it, every time they conceive of an obviousness objection.

  13. An Examiner,

    How is hindsight reconstruction generally proper? I am not asking about the ends, I am asking about the means.

  14. Yep, but is generally proper. It’s usually a broadening of the ambiguous limitation to a point just broad enough that the reference still reads, but narrower than the BRI. In essence, I’m doing the applicant a favor by a)hinting at similar definite interpretations found in the analogous art (ie, an interpretation consistent with one of ordinary skill), and b) providing them with evidence on how the term is definitely construed in the art. I could, alternatively, just use the BRI, but that wouldn’t provide any insight to applicant on how to fix the issue and encompasses far more available art.

    In such a case, the applicant can sometimes successfully argue that “the phrase is definite to one of ordinary skill in the art, as evidenced by the art cited against me”. And, in those cases, if attorneys call to resolve the issue, I will tell them to write this argument in their response and I will have to find it persuasive.

    Of course, only do that if you want the interpretation to be consistent with that of the prior art (ie, this ambiguous limitation isn’t your novelty). If it is the novelty, you’ll want to pull a better wording from your spec in an attempt to both resolve the 112 and overcome the prior art.

    Hope that makes sense.

  15. Interesting article and comments. BRI is just one of several asymmetries in the patent system that are biased against an inventor. Another asymmetry is your patent application can be denied for prior art anywhere in the world, but your patent is only valid in a certain country. Yet another asymmetry is that in order to obtain a patent you have to apply for it, while other forms of intellectual property do not require an application to the government.
    Personally, I agree with the article that BRI should be abolished, because I believe an inventor has a right to a patent under the constitution. The prior art asymmetry could be solved by some sort of reciprocity system, where a patent issued in the UK for instance is given force in the US and vice versa. This would be real patent harmonization, instead of the bad patent polices the US has adopted in the name of harmonization. I doubt a registration system for patents, which the US has already tried, would be a good idea, but the system should not be a torture test for inventors or their attorneys. Eliminating or at least minimizing these asymmetries would be good for inventors, US innovation and the US economy.

  16. BillyJames: “Buszard is a great example, where the Examiner decided that “flexible” means “rigid.” I’ve run into “essentially straight” means “wildly curved” and “close to zero” means “any number at all.” Has anyone had success arguing against against this? That a PHOSITA understands the words “substantially” or “essentially” or “about”?”

    Here’s how I do it. I identify the wiggle areas (let’s say wiggle1 and wiggle2) of the claim in my initial claim analysis. I write up a 112 2nd, explaining how wiggle1 and wiggle2 are indefinite and that I’m going to interpret them as [leave blank space in my OA]. I then search and find art for the “novelty”. Once I’ve found decent art, I determine how wiggle1 and wiggle2 need to be rewritten in order for my reference to map correctly. I then go back and fill in the blank space in my OA, conveniently interpreting so my reference perfectly maps.

  17. “Even a claim that is subject to interpretation but can be argued into a meaning favourable to your client will cost the client a couple million in litigation to make that argument…”

    Baloney. There are an awful lot of infringement cases filed on a contingency basis – you really think those attorneys are routinely risking “a couple million in litigation”?

    It costs a couple hundred bucks to make that argument. Fighting it is much more expensive.

  18. “Further, why on earth would you want your claim to have just one meaning? What is the value of such a claim?”

    As 6 pointed out, such a claim is the only kind with any value.

    The ‘just one meaning’ can be as broad as your client wants/needs, but it should be the only reasonable meaning. Even a claim that is subject to interpretation but can be argued into a meaning favourable to your client will cost the client a couple million in litigation to make that argument, and it will make the infringer more likely to put up a fight because he has an argument on his side too.

    If you want your claim to cover a particular device or composition, draft your claim to explicitly cover it. If you really want a valid patent that covers more than one meaning, that’s what claim 2 is for.

    Note: I am not an examiner, this is not a 112 rejection, etc.

  19. “Further, why on earth would you want your claim to have just one meaning? What is the value of such a claim? ”

    So that I don’t 112 yer arse.

    I guess the value of the claim is to protect that one meaning. That’s the value of all well defined claims.

  20. Practitioner, thanks. Let me correct some misapprehensions. Are you new to this blog? I’ve said all this before, many times, as others keep reminding me. But for you, once more.

    By “Presumption of Validity” is meant something more than that the attacker of validity has the burden of proof by preponderance. It corresponds to the “clear and convincing” burden. That’s what’s wrong (and asymmetric).

    Europe has no real teeth? Do you know that from personal experience, or are you just repeating the mantra you have heard? Try infringing a patent, held by a vigorous local corporation, in England or Germany or Holland, and see whether the law has teeth. The finder of law and fact (and what the claim means) is a technically qualified specialist patent judge, not a jury.

    By “just one meaning” I mean the “same” meaning whether for infringement or for validity. I don’t mean “covers one embodiment (best mode) only”. Or am I misunderstanding your point?

  21. We complain when the USPTO takes a broadest possible interpretation. But we’d also complain if they explicitly introduce a narrow definition into the record. We “Little Red Riding Hood” patent attorneys want an interpretation that’s “just right.” We aren’t going to get it.

  22. ********”Has anyone had success arguing against against this? That a PHOSITA understands the words “substantially” or “essentially” or “about”?”*********

    Check out Kinzenbaw v. Case, 179 Fed.Appx. 20, 2006 WL 1096680 (Ca.Fed. (Iowa))

    From all appearances, to overcome a 112 challenge, you just have to get someone skilled in the art to testify that the degree of variation evidenced in the prior art would be significant. Presenting published documents to support those conclusions is not required. I think filing a Declaration from the inventor is the way to go. At that point, unless I am mistaken, Examiners have no choice but to take the inventor’s word for it and withdraw the rejection. That has been my experience. It helps if the Declaration is properly worded and the remarks in the Response cite the relevant case law and the CFR and MPEP to the Examiner, with quotes of the relevant portions provided for the Examiner’s convenience.

    IANYL. TINLA.

  23. To MaxDrei

    Why is the presumption of validity disturbing? Its absolutely necessary to a properly functioning system and creates a huge incentive for the PTO to get it right. What we need are consequences for the PTO if the patent is found invalid for obviousness or anticipation. If there was no presumption, then the whole process would devolve into a bureaucratic mess with no real teeth – like in Europe.

    Further, why on earth would you want your claim to have just one meaning? What is the value of such a claim?

    This is just silly.

  24. “but that is why we have appeals. And yes I know appeals cost money”

    And time. Lots and lots of time.

    File notice of appeal today, when do you think it will be decided? 2012? Looking at the growth of the BPAI stats–they’re disposing at 1/3 of the rate they’re recieving cases…2012 might be optimistic!

    link to uspto.gov

    All things, even patents, have demand curves.

    Increase the cost of getting a patent, decrease the value of haveing a patent = less patents.

    If that’s the goal of the PTO…”Mission Accomplished.”

  25. I often wondered whether it was wise to argue about a silly expansion of definition for a claim feature by the examiner. It appears that if you can amend in another area of the claim to overcome the rejection, the claim language with the expanded interpretation, if not contested, may later have the same broad meaning given by the examiner.

  26. “Personally, I’ve always referred to it as ‘broadest unreasonable interpretation’, because it usually is unreasonable whenever the examiner invokes it. Often it wastes an office action, and drives us into filing an RCE. It is usually coupled with citing wildly irrelevant art, of the kind that no-one who had read the spec could ever think had any pertinence. Then the ‘real’ OA, that cites actually relevant art, is made final, when that art ought to have been cited in the first OA. If it isn’t gamesmanship to cite the best art only in a final, then just what would be?

    Posted by: Alun Palmer | Jul 22, 2009 at 09:28 PM”

    Couldn’t agree more.

    When an Examiner relies on “Broadest Reasonable Interpretation” it means they can’t find the features of the claim in the art. So they tell a whopper instead, without having to provide an objective source for the interpretation, and without any evidence that any person skilled in the art would ever make the interpretation used in the rejection. Bogus from start to finish.

    The logic behind the rule of “broadest reasonable interpretation” is basically sound. It is the wild, unconstrained, capricious application of the rule in the PTO that has turned it into a kangaroo court device. A first step in correcting it might be to require citation of at least three non-USPTO sources in the literature in which the term is used in the field of the invention in the way the Examiner has interpreted it.

    It is way, way past time for the Federal Circuit to put an end to this grossly abusive practice in the PTO.

  27. Billy James writes, asks, ” “flexible” means “rigid.” I’ve run into “essentially straight” means “wildly curved” and … Has anyone had success arguing against against this? ”

    Only at the Board, and more in the context of the propriety of combinations. I actually had a “flexible means rigid” situation (in a multi-piece of art 103).

    To get to the invention as claimed, which wouldn’t work without (and claimed) a minimum bending stiffness, the examiner substituted into a patent requiring a “thin flexible sheet material” as part of its widgit, the material taught in a reference relating to a “high stiffness” sheet material.

    The primary reference did not recite any test for “flexible”, so according to the examiner’s thinking, the “high stiffness” sheet might only be as stiff as the “flexible” sheet was flexible.

    I had fairly good facts on my side; the reference requiring the “thin flexible sheet material” used that phrase 30+ times like a mantra and never once referred to the sheet material by any other language. The other ref never once referred to its material by other than “high stiffness”.

    On the other hand, I have lost at the Board where “continuous” glass filaments in RefA were substituted into RefB calling explicitly for chopped glass filaments (i.e., clearly discontinuous as known to PHOSITA). Since neither reference defined its terms (and despite my citing art showing that PHOSITA knows well these terms of art), the Board reasoned that the continuous glass filaments might be only so long as the chopped, and vice versa. The client didn’t care to take it further.

  28. Anonymous, thanks. You make my point. Going to issue with claims that are the broadest and vaguest conceivable ought (in a sane post-issue set-up) have some negative downstream consequence. Like lack of novelty over the state of the art, or that the claim includes within its true scope something that’s obvious. Just add another ingredient, namely, clean hands needed, before one can get permission to inject a curative narrowing amendment, and all that vague broad nonsense would soon stop.

    Instead of which, we continue to witness the unedifying spectacle of litigants and courts deliberately construing claims perversely narrower than what is their plain honest meaning to the PHOSITA. This they feel they have to, just in order to attain their perception of doing justice between the parties. It ain’t right and it brings the patent system into disrepute. Disrepute with the customer, the PHOSITA, who ought to be king in all this.

  29. The BRI is necessary because attorneys like to get the inventions allowed with the broadest and vaguest claim language in the independent claims. The day the BRI is no longer needed is the day when the attorneys use specific and precise language to define their inventions.

  30. So, here’s my stone that I’m going to throw into the waters of debate:

    It is the presence of one asymmetry, peculiar to US patent law (presumption of validity) which forces the introduction into that law of a complementary asymmetry (BRI). If it weren’t for the disturbing presence of the Presumption, there would be no need for the two concentric circles of the BRI vs DCI.

    Putting it another way, the extent by which the radius of the BRI circle exceeds that of the DCI circle provides a comfort blanket to those defending the status quo in litigation, where bad claims often survive good attacks on their validity. Subconsciously, they think like this: If the PTO found it valid, with artificially inflated scope, then surely it must be valid, when in the DC its ambit is going to be found to be so much narrower. Bonkers, and hard to explain to outside observers.

    Why not keep it simple? By which I mean:

    The claim has only one meaning. If that meaning embraces something old or obvious, the claim is bad. To cure the invalidity, owner must petition to narrow it by amendment. Courts should examine both infringement and validity, but both at the same preponderance standard. As soon as the claim is narrow enough to survive validity attacks, and yet still of a scope that embraces the accused embodiment, patent owner wins. Otherwise not.

    People can understand that. With that understanding will follow respect for the patent system. Such respect is no longer a given, these days.

  31. “such papers can also sometimes provide a convenient way to collect case cites for the case law that the academic authors think they are more qualified to judge than the judges.”

    I’m pretty sure that 95% of the people who comment on here regularly think they’re more qualified to judge than the judges (including SCOTUS).

  32. While I think 6 cannot be serious, assuming he is, all I can say is that I doubt that a 112 P1 rejection will be sustainable. True enough that examiners can misapply (or abuse) section 112 as much as any other provision; but that is why we have appeals. And yes I know appeals cost money, but so does litigation to invalidate patents. The BRI standard causes erroneous rejections that must be cured through amendment or appeal; while saving erroneous grants that otherwise must be cured through litigation or reexamination. As I indicated in my original post, whether the trade-off is cost-benefit justified is an empirical question, one that the authors of the paper appear to assume an answer without sufficient evidence.

  33. Personally, I’ve always referred to it as ‘broadest unreasonable interpretation’, because it usually is unreasonable whenever the examiner invokes it. Often it wastes an office action, and drives us into filing an RCE. It is usually coupled with citing wildly irrelevant art, of the kind that no-one who had read the spec could ever think had any pertinence. Then the ‘real’ OA, that cites actually relevant art, is made final, when that art ought to have been cited in the first OA. If it isn’t gamesmanship to cite the best art only in a final, then just what would be?

  34. An issue that the article did not address fully was the propensity of some Examiner’s to not just stretch, but to *completely read out* a limitation based on the BRI standard.

    Buszard is a great example, where the Examiner decided that “flexible” means “rigid.” I’ve run into “essentially straight” means “wildly curved” and “close to zero” means “any number at all.” Has anyone had success arguing against against this? That a PHOSITA understands the words “substantially” or “essentially” or “about”?

  35. “In reality, I doubt you will fail section 112 in claiming “substantially pure sodium chloride” based on a disclosure of sodium chloride. ”

    On the other hand, take it from someone who knows, I will 112 1st the C R A P out of your A S S if you pulled that bs in front of me.

    “that is a problem with section 112 law”

    Hardly. A ban on new subject matter isn’t a “problem”. TJ here apparently thinks we may as well just let them rewrite their spec as prosecution progresses.

    You need some time in the trenches TJ.

    “In other words, should applicants be able to circumvent section 112 P1 requirements by clever drafting?”

    That’s the plan, and you won’t have even one day go by that you didn’t see such nonsense go on if you were an examiner. Not one. This is, as a matter of fact, the very foundation upon which attorney drafting of claims rests. And the courts fully sanction it.

    As an aside, this is tangentally an issue which is somewhat addressed by the Miyazaki case. Instead of making them fail 112 1st, you simply make them fail 112 2nd because the claim is amicable two or more interpretations.

    Time in the trenches TJ, look into it.

    “The REAL reason for BRI — to support Examiner laziness.”

    I was commenting on a slightly different issue, but at heart, sure you could call it “laziness”. It is a slightly different issue because the action already went out, and it isn’t just laziness that makes you want to avoid sending 2nd action non-finals to account for their alleged narrow interpretation of a claim term that will not help them obtain a patent. First you’re doing the client a favor by saving him $$$ in prosecution and having to deal with the 2nd action non-final, second, you’re saving your spe time and trouble, third you’re saving yourself from having been seen sending out 2nd action non-finals to account for mere allegations, and finally, you’re helping to solve the backlog.

    And besides, that isn’t the reason for it, that’s just the reason we enjoy it :)

  36. “I could give two shts about your definition if all it is going to do is make me go find a less advanced piece of art to serve as my primary (or similar situation).”

    The REAL reason for BRI — to support Examiner laziness.

    6 — telling it like it is.

  37. “Are applicants to write explicit definitions into the spec for all 398 words present in their claims?”

    Only the words they want to rely on to distinguish the claims from the prior art?

    The truth is that most of these interpretation issues fall into the catagory where they aren’t even related to what the application makes clear is the improvement over the prior art. But that’s just another reason why I have little sympathy on the issue. Applicants want to distinguish their application from prior art that was convenient to find and fits a broad definition of a claim term to “make the office have to find the exact reference that supports the rejection”. I have little time for such games. I know I know, what’s proper is proper and all that, but this is RL, and I could give two shts about your definition if all it is going to do is make me go find a less advanced piece of art to serve as my primary (or similar situation). I’m sorry to say it, but that is what it boils down to in day to day practice.

    “by first paper, do you mean the art cited against me”

    No, I mean your ad.

    Furthermore, it just struck me that if you gave me such an ad then it might just lead to a 103 combination using the ad lol.

  38. hackwriterwriterhack,

    You are arguing about interpretation of the specification under section 112, not claim interpretation under BRI. The question is whether disclosing “sodium chloride” in the specification adequately discloses substantially pure sodium chloride to claim “substantially pure sodium chloride.” This is not a problem with the BRI standard.

    The BRI standard applies to claim interpretation, not specification interpretation. If those of skill in the art know what “sodium chloride” is without explicit definition, and know that it does not encompass snigglets, then your amended claim should not fail section 112. Apart from the cost of an extra amendment, there is no harm in such a case.

    The only harm that could occur is if a section 112 rejection is made against the amended claim. The implicit premise of your hypo is that you would fail section 112 in the absence of explicit definition with the amended claim when you shouldn’t. In reality, I doubt you will fail section 112 in claiming “substantially pure sodium chloride” based on a disclosure of sodium chloride. But even if you do fail section 112 on the amended claim, that is a problem with section 112 law, not with the BRI standard.

    To make this clearer, assume a hypothetical situation where an amended claim would fail section 112, and deservedly so. Should the applicant be able to escape the section 112 rejection by using a vague claim, yet ultimately get exactly the same coverage? In other words, should applicants be able to circumvent section 112 P1 requirements by clever drafting? I take it no one would argue that. The difference in your case is that you don’t appear to deserve a section 112 rejection. And that makes clear the real issue is what section 112 requires and should require.

  39. “The Examiner’s “BRI” reads your claim element “using sodium chloride salt” onto a prior art process using a mixture of 50% sodium chloride, 30% sucrose, and 20% calcium carbonate.

    “How do you introduce the proposed narrowing amendment without also introducing new matter?

    If your claim read “…treat with a composition comprising sodium chloride salt…” then prior art disclosing sodium chloride, sucrose and calcium carbonate would read on it. So change to “consisting of” language or file a CIP so you can use “…consisting essentially of…”

  40. Hi TJ, I just can’t agree with your position. Those of skill in the art know what “sodium chloride” is, and they know what “snigglet” is, and know that given an instruction calling for sodium chloride, they should not reach for snigglets.

    I’d think that in many, many sets of already granted claims, you or 6 would be able to find a term for which you can stretch the BRI, and for which an explicit definition is absent from the spec, such that they’d fail 112 if the applicant had to argue a narrower construction than that espoused by the examiner’s stretchy BRI.

    It’s like broje’s issue above where the examiner’s BRI of computer=human brain.

    Are applicants to write explicit definitions into the spec for all 398 words present in their claims?

    And examiners already complain about 80 page specs.

    Guess it depends on what is is?

  41. hackwriterwriterhack, your hypo actually demonstrates the usefulness of the BRI test, not its problems. In your hypo, the reason that you cannot claim more narrowly is that the more narrow claim–which you contend to be “correct”–might be deemed unpatentable for failing section 112. It may well be that it shouldn’t fail section 112 on the merits, but that is a substantive argument about section 112.

    In sum, if you can’t get the explicitly narrow claim because it fails a statutory requirement; you shouldn’t be able to get the ambiguous claim that you want construed to match the narrow scope.

  42. As a systematic issue, a BRI during prosecution makes it more difficult for the claim to be allowed as pointed out by the authors since the claim is read as broadly as possible on the art.

    It doesn’t seem to me to be a problem with the standard, its a problem of argumentation on the part of the prosecuting attorneys. An Examiner will, as also pointed out by the authors, avoid difficult interpretations by reading the claim broadly. It is then up to the applicant to distinguish the claim over the art and rebut the Examiner’s broad interpretation by addressing the difficult interpretation issue, presumably in the manner best suited to the applicant.

    In a way, a loose standard of interpretation such as BRI, works in favor of the applicant since the applicant is free to characterize the features of the claim as against the art any way they want, or even amend the claims. Any stricter or more narrowly articulated standard would have different problems and would also lead to “improper and uncorrectable denials of patent protection” based instead on arbitrary standards of interpretation.

    Under a BRI standard, when the claim is allowed, its scope is presumably narrower than the broadest interpretation given it in light of the art over which it was eventually distinguished.

    This is a good thing.

    Yay BRI! Boo Academics with too much time on their hands.

  43. 6 writes, “But as long as the first paper didn’t also have the term used as meaning salt, sugar and chalk, it might be sufficient.”

    I’m not sure I understand you – by first paper, do you mean the art cited against me?

    The art cited against me never refers to that mixture as “sodium chloride” (the term in my method claim step, “use sodium chloride”), and for that matter, never refers to it as a “mixture having sodium chloride” (which is the label the Examiner has applied to it in order to better tie it back to my claim term).

    Rather, the art has a recognized term for this salt/sugar/chalk mixture and it is always referred to by that art-recognized term (call it “Snigglet” for lack of a better term, and if you recall HBO’s Not Necessarily The News).

  44. “I was trying to point out that the way many examiners use BRI, you end up with unimagined constructions for which you may have no remedy. ”

    In that case then the answer is: Tough luck.

    “Given my hypo above, then, would an advertisement for Morton’s Salt work”

    I doubt it but it might depending on the case.

    ” Or would I also need a paper published by Morton’s showing that “sodium chloride” means salt but not salt, sugar and chalk?”

    You would have a better chance. But as long as the first paper didn’t also have the term used as meaning salt, sugar and chalk, it might be sufficient. I would also encourage them to provide me with a piece of art from the relevant art at hand which I don’t think your advertisement necessarily is.

  45. “I was trying to point out that the way many examiners use BRI, you end up with unimagined constructions for which you may have no remedy. ”

    In that case then the answer is: Tough luck.

    “Given my hypo above, then, would an advertisement for Morton’s Salt work”

    I doubt it but it might depending on the case.

    ” Or would I also need a paper published by Morton’s showing that “sodium chloride” means salt but not salt, sugar and chalk?”

    You would have a better chance. But as long as the first paper didn’t also have the term used as meaning salt, sugar and chalk, it might be sufficient. I would also encourage them to provide me with a piece of art from the relevant art at hand which I don’t think your advertisement necessarily is.

  46. “Furthermore, I believe he would say that if you don’t have support to introduce the amendment, then why in the blue blazes would you suppose that the interpretation by the examiner was erroneous?”

    Exactly. If your argument is that reading the claim in light of the spec results in a narrower construction than the BRI used by the examiner, then there should be support in the spec for the amendment. Conversely, if the spec lacks support for the amendment, then reading the claim in light of the spec would result in the BRI used by the examiner.

  47. Hi 6, seems you’ve conflated my posts a bit (this in reference to your “how in the blue blazes” comment). I didn’t write that the BRI relating to “sodium chloride” reading on “mixture of sodium chloride, sucrose, and calcium carbonate” was erroneous. That was in the other post, and I was also quoting a given by another poster.

    I was trying to point out that the way many examiners use BRI, you end up with unimagined constructions for which you may have no remedy. Poster “Construe This” had a similar example. If there’s no support in your spec that “salt does not mean a mixture of salt, sugar and chalk” you’re out of luck. Especially as few examiners seem willing to accept clear disavowals of scope in argument.

    You also write, “Personally I hold the issue resolved if the applicant can point me to a piece of art that uses the term unambiguously as they wish it to be used”. Given my hypo above, then, would an advertisement for Morton’s Salt work? Those who purchase Morton’s Salt would surely be shocked to find it was a 50-50 mix of salt with sugar and chalk. Or would I also need a paper published by Morton’s showing that “sodium chloride” means salt but not salt, sugar and chalk?
    :-)

  48. “That must originate not from an attorney, but from a person who can swear under oath and on pain of imprisonment that he is in his right mind.”

    Who really is in their right mind? If Michael R. Thomas signed this declaration, he might at one moment seem perfectly fine, but at another he might be completely insane. As they say, normal is just a setting on a washing machine… =)

  49. broje writes: “But many of us have seen an Examiner issue a 101 rejection of a claim reciting a method executed on a computer processor, purely by interpreting the term “computer processor” broadly enough to include a “human brain.””

    Sounds to me like a 132 declaration would solve that problem. If what you want to say to the Examiner is along the lines of “come on, nobody in their right mind would believe that”, you’re making an argument of fact. That must originate not from an attorney, but from a person who can swear under oath and on pain of imprisonment that he is in his right mind.

  50. “Well, maybe because the spec you inherited does not have support?”

    That is correct.

    “How do you introduce the proposed narrowing amendment without also introducing new matter?”

    You don’t.

    “If you amend due to an erroneous rejection, you haven’t remedied the erroneous rejection.”

    He means that the “overall situation” of there being an erroneous rejection upon the record of a patent app is remedied by an amendment.

    Furthermore, I believe he would say that if you don’t have support to introduce the amendment, then why in the blue blazes would you suppose that the interpretation by the examiner was erroneous?

    I personally know the answer to this question, as the issue does arise occasionally. It is because you have a so so argument for the definition of the term being implicit to one of ordinary skill, but the argument is viewed as being much weaker when it comes to actually introducing that terminology as a new limitation.

    But, in all honesty, this issue is more commonly solved in my AU by calling the examiner, spe or signatory examiner and working things out with them. So the whole, “amemdment solves the problem” isn’t the only way to resolve the issue. Personally I hold the issue resolved if the applicant can point me to a piece of art that uses the term unambiguously as they wish it to be used, and I invite them to submit such. I’ve had a few takers, and a few winners, but on the whole they fail pretty miserably at doing so. It doesn’t even have to be a piece of art immediately relevant to the claims, just one that uses the term in such a manner, and at the same time, doesn’t use it in the manner in which I’m using it.

    In effect, I turn the burden of proof around on them. Pretty frakkin hard to meet ain’t it? :)

    I will say this though, it gets a lot easier to meet when you get good at going through NPL.

    Heck, usually if the app puts an acceptable definition on the record then I’ll consider letting it go. But it better be acceptable, and certainly no more outrageous than my own.

  51. TJ writes “Erroneous rejections can be remedied by amendment.”

    Not necessarily true.

    I’ve got language that reads “perform action A based upon performance trait T of feature F.” I was told the BPAI that this limitation is disclosed by “performing action A based upon trait TC of feature FC, which happens to be connected to feature F.” Their argument was that if feature FC has this particular trait TC, then Feature F cannot perform … ergo, trait TC is a performance trait T of feature F.

    The (il)logic in this statement is that if you taking it to its logical end … any trait that ultimately effects whether or not feature F performs can be considered a performance trait. Thus, if the fact that somebody bent down to tie their shoelaces and this caused a series of connected events that lead to feature F not performing, then this initial event is also a performance trait of feature F.

    The problem is how do you limit the trait to that of a trait only of feature F? Not a trait of another feature? One would think that upon writing “performance trait T of feature F” that I excluded traits of other features. However, under a BRI standard, I apparently haven’t.

    It is like writing “I used a corporal part of my being, permanently connected to me and no other, extending from my shoulders, and no other shoulders to rest against the table” instead “I used my arm to rest against the table.” The former being used to exclude the possibility that the “arm” I was referring to wasn’t somebody else’s arm or the arm of a chair or a firearm.

  52. “Of course you do realize that the end result of using BRI at both stages (prosecution and litigation) leads to the same result as using the “correct interpretation” at both stages?”

    Not quite, there is nowhere near as many patents are laying around to be licensed or litigated under the BRI at both stages as there is uder the “correct interpretation” at both stages.

  53. Poster A plurality of thresholding units asks, “If you really intend the limitation to be construed more narrowly than the broadest reasonable interpretation applied by the examiner, then why not amend to recite the intended narrower construction explicitly?”

    Well, maybe because the spec you inherited does not have support?

    As an example, what if your claim is a method including the step of “using sodium chloride salt”. Your inherited spec never says anything other than “using sodium chloride salt”, and does not mention that the sodium chloride should be substantially pure.

    The Examiner’s “BRI” reads your claim element “using sodium chloride salt” onto a prior art process using a mixture of 50% sodium chloride, 30% sucrose, and 20% calcium carbonate.

    How do you introduce the proposed narrowing amendment without also introducing new matter?

  54. TJ writes, “Erroneous rejections can be remedied by amendment; while erroneous grants can be remedied by litigation. The authors follow up by arguing that amendment is costly; but so too is litigation or reexamination. There is just no reason to assume that amendment is more costly than litigation or reexamination.”

    While I agree with you that there’s no justification for asssuming amendment is more costly than re-ex or litigation (likely the opposite in terms of dollars), I disagree with your premise that erroneous rejections can be remedied by amendment.

    If you amend due to an erroneous rejection, you haven’t remedied the erroneous rejection.

    You’ve simply (improperly, considering that the given here is “erroneous”) amended your claims.

  55. “the term “computer processor” broadly enough to include a “human brain.”

    You gotta be kidding.

  56. If you really intend the limitation to be construed more narrowly than the broadest reasonable interpretation applied by the examiner, then why not amend to recite the intended narrower construction explicitly?

  57. +1 for two cents.

    Mr. Morgan,

    You said, “The rationale is that the applicant is still in a position to add clarifying claim amendments to avoid the cited art.”

    But many of us have seen an Examiner issue a 101 rejection of a claim reciting a method executed on a computer processor, purely by interpreting the term “computer processor” broadly enough to include a “human brain.”

    And when we try to amend the claim to recite some elements of structure of the processor, we get two things. One is a written description 112 rejection that the exact words we try to add to the claim are not found in the specification. The other is an avowal that the structural limitations in the method claim are not accorded patentable weight because they are structural limitations.

    Of course, the problem is that the Examiner is interpreting the term “computer processor” in an extremely unreasonable fashion that would NOT be adopted by one skilled in the art. The recourse to appeal that rejection is unsatisfactory because it is expensive and time consuming. Just look at the BPAI backlog stemming from these types of crap rejections (yes, I said “crap rejections”).

    I don’t really think that the broadest REASONABLE interpretation is a bad standard, its just that Examiners are taking license to apply it as the broadest POSSIBLE interpretation or the broadest LITERAL interpretation. ORDINARY MEANING is even out the window, a lot of the time. But, when an Applicant says that the term should not be interpreted that broadly on the record, then the Examiner’s hands should be tied. I’ve resorted to submitting affidavits from inventors as PHOSITAs testifying in just that fashion, simply because doing so does tie the Examiner’s hands. It has been a successful tactic, but one to which we should not have to resort.

  58. Paul, I agree with you that it is good to expose academic papers to practicing lawyers. This, however, is not an example of a paper otherwise directed to academics: it is published in the AIPLA Q.J. (a practitioner journal) and is co-written by a King & Spalding partner.

    On the substance, I’m not sure I buy the argument. The argument seems to come down to the sentence that the BRI standard causes erroneous rejections, which “cannot be resolved under
    the current system”; while the alternative type of error–erroneous grants–can be remedied by later judicial invalidation.

    But this is just not true. Erroneous rejections can be remedied by amendment; while erroneous grants can be remedied by litigation. The authors follow up by arguing that amendment is costly; but so too is litigation or reexamination. There is just no reason to assume that amendment is more costly than litigation or reexamination.

  59. “The MPEP lacks a form paragraph for responding to an argument that an interpretation is unreasonable in view of the specification, so you can’t get any kind of discussion going
    on that point.”

    That is a great line. Thank you.

  60. I want to add that Dennis provides a real public service in exposing summaries of academic papers on patent law to the light of the real world to some extent. I.e., so as not to limit them to merely incestuous exchanges between other academics. [A study last year demonstrated how rarely they are judicially cited any more.]
    By posting cites to such papers on actually-used web sites like this one, such papers can also sometimes provide a convenient way to collect case cites for the case law that the academic authors think they are more qualified to judge than the judges.

  61. 6, that would be perfectly acceptable also. At least if BRI applied during litigation the patentee is wrestling with the same bear during prosecution and enforcement. Of course you do realize that the end result of using BRI at both stages (prosecution and litigation) leads to the same result as using the “correct interpretation” at both stages?

  62. “The broadest reasonable interpretation” test for claims in the PTO is long established CAFC case law that would require a [highly unlikely] en banc CAFC reversal, so this is just more academia-paper-printing.
    The rationale is that the applicant is still in a position to add clairifying claim amendments to avoid the cited art. Even in a reissue or reexamination the claims may also be narrowed to more clearly avoid then known prior art [yet still read on known infringers, if that is possible] so the same PTO claim scope reading applies. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984). The exception is a reexamination of an expired patent [yes, that can be done, within its period of enforceability for back damages], since that patent cannot be amended. Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Int. 1986).
    This is not to dispute above comments that too many examiner claim scope interpretations are NOT “reasonable.”
    However, this should also remind everyone of the favorate old question of some Board members in appeal hearings: “Mr. X, could you please point out exactly where in your claims is this distinction that you are arguing over this prior art?

  63. anon said: “I think the arguments presented in this paper fall apart or are mitigated by the fact that the broadest reasonable interpretation includes a reasonable interpretation, which includes the “correct” interpretation of the claims.”

    Did you even bother to read the article? The arguments presented in the paper have little or nothing to do with the fact that BRI helps to ensure that a court does not interpret a claim more broadly than the examiner presumably did. While the article talks about this being one of the rationales behind using BRI during prosecution, this rationale does not in any way mitigate against the problems addressed in the article. One of these problems is that BRI results in improper denial of patent protection and/or unnecessary narrowing of claim scope.

    Interestingly, your post suggests that you recognize the problems discussed in the article–namely, that BRI allows the examiner to determine patentability on the basis of something broader than the “correct interpretation of the claims.” While that process arguably helps prevent a court from construing the claims more broadly than they were during prosecution, it often results in claims which are narrower than they need to be.

    BRI should be abolished–particularly given the strict reading of claim language for purposes of claim interpretation during litigation. The “correct interpretation,” as you call it, should be the standard used during prosecution as well as enforcement.

  64. Rick, I mostly agree with your comment.

    Except when you say, “The Office seemingly without exception, appears to ignore the qualifier that the broadest reasonable interpretation must be consistent with the specification.”

    The examiner typically goes to the pertinent parts of the specification to understand a claim limitation. However, when a specification is overly long (50-100 pages) some things might get overlooked. Therefore, the examiner reads the claims giving ordinary plain meaning to the words. If the words describe something more broad than what appears to be the invention, and that interpretation is in the art, then a rejection is made. I’ve argued against this approach, but eventually I changed my mind. Plus, that broad interpretation might be buried somewhere in the 100 page specification.

    I also don’t understand your “levy a 112″ approach. Under what rationale? I was taught that breadth and indefiniteness are two different things.

    … Now I just sit back, and wait for Noise to attack.

  65. ” I have always thought that the last clause limited the breadth, but examiners just ignore it and the Board won’t address it.”

    Indeed. The MPEP lacks a form paragraph for responding to an argument that an interpretation is unreasonable in view of the specification, so you can’t get any kind of discussion going
    on that point. Even after you make the argument and create the estoppel you can’t get a more narrow interpretation. From the paper:

    “Accordingly, the BRI standard creates an odd situation: a patent applicant must fight to have subject matter allowed that she will not be able to enforce in court. Referencing Figure 1 [shown in Dennis' lead-in], an inventor must prove that the gray area is patentable to get into the larger white circle, but will never be able to exclude others from practicing the gray area.”

    Figure 1 misrepresents the scope of the grey area in practice, unfortunately, since examiners for the most part will not cast their eyes unto the specification. The outer bound of the grey area, what is reasonable in light of the specification, in practice is more of a diffuse boundary that trails off into space, limited only by the examiner’s ability to free-associate. So, a collection of boulders reads on a limitation of sand, because there’s a continuous range of rock sizes between sand and boulders and how’s one supposed to know that their pile of boulders insn’t infringing?

    I can live with BRI as long as the R is grounded in the specification, but in reality we are living with the BCI, Broadest Conceivable Interpretation. Another reason the BPAI is backed up.

  66. I agree with ’2 cents’ above. The Office seemingly without exception, appears to ignore the qualifier that the broadest reasonable interpretation must be consistent with the specification. That requirement is left to the applicant to push through a costly and time consuming appeal. I’ve seen interpretations so broadly (and inflexibly) asserted by the Office that, if asserted in an infringement action by a patentee, would invalidate the claims for lack of descriptive support. If nothing else, the BRI standard should allow the Examiner to take the interpretation as far as the outer limits of the description, and perhaps its reasonable equivalents. If the applicant argues that the Office’s interpretation is broader than the specification, but the Office still believes its interpretation is reasonable, the Examiner should levy a 112 rejection, and let the applicant respond to that.

  67. my 2 cents says: ” I have always thought that the last clause limited the breadth, but examiners just ignore it and the Board won’t address it.”

    Very good point.

  68. I think the arguments presented in this paper fall apart or are mitigated by the fact that the broadest reasonable interpretation includes a reasonable interpretation, which includes the “correct” interpretation of the claims.

    In other words, the correct interpretation of the claims reads only on subject matter that is also read on by the broadest reaasonable construction.

    As a result, the courts can only narrow the Examiner’s claim construction, but cannot construe the claims to read on a device (or a reference) that would not have been read on by the Examiner.

  69. dict ct takes into account presumption of validity, and PTO gives the claims the broadest possible scope that can reasonably be given, plus more.

  70. This should be a good area of study. The MPEP actually states: their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” I have always thought that the last clause limited the breadth, but examiners just ignore it and the Board won’t address it.

  71. Good topic Dennis in that the EPO also practises a BRI standard but I don’t see it having the disastrous consequences you posit. Maybe that’s because in Europe it overlies 1) the Principle of Synthetical Propensity (See EPO Decision T_0190/99) and 2) the English “purposive construction” principle of claim interpretation. I see BRI having a beneficial effect on European patent practice and , above all, legal certainty. Maybe this is yet another detail of patent law that isn’t suitable to import into the US legal system.

    On that subject, are you planning a thread on the Scott Shane Paper on “Administrative Challenges to US Patents”? Professor Shane seems to be in favour of moving to a simple patent registration regime for the USA, rather than hurting the US economy by examining the patentable merits of apps filed at the PTO.

  72. I downloaded the article and plan to read it in due course. I know Chris Cotropia as an IP law professor at my law school. This should be a good article to read.

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