Wednesday, July 22, 2009

Time To Do Away With "Broadest Reasonable Interpretation?" Paper Says "Yes!"

Dawn-Marie Bey and Christopher Anthony Cotropia published a paper recently titled "The Unreasonableness of the Patent Office's 'Broadest Reasonable Interpretation' Standard," and it's a very interesting look at the PTO's claim interpretation methodology. While there have been many articles and studies regarding claim interpretation in the courts, few have looked at claim interpretation in the PTO. Bey and Cotropia took a good look - and they didn't like what they saw.

According to the paper:

(1) The 'Broadest Reasonable Interpretation' standard (BRI) is inconsistent with patent statutes. Because different standards of claim interpretation are applied between the PTO and the courts, a different invention is deemed to exist during enforcement than exists during prosecution.

(2) The BRI Standard is contrary to the unitary appellate structure. Because of these different interpretations, the CAFC ends up applying a different claim interpretation doctrine in USPTO appeals than in district court appeals.

(3) BRI allows examiners and the CAFC to skirt tough claim interpretation issues. BRI explicitly forecloses any need for the examiner to find a "correct claim interpretation." Instead, they just have to be "reasonable." Examiners never need to resolve claims "in light of the specification", and applicants are not required to reply to such analysis.

(4) BRI results in improper denial of patent protection. Not only does the BRI standard make rejections more likely, it also means that some rejections are, in fact, incorrect. They are incorrect because the prior art or an obvious variation of the prior art only falls within the claim scope that exists under the USPTO's interpretation of the claim. Under the normal claim interpretation methodology applied by district courts, the claim is valid because it does not capture this unpatentable subject matter.

(5) BRI forces costly amending of patent claims. Amendments go hand-in-hand with additional USPTO and attorney costs. Also, the requirement to amend also necessarily prolongs prosecution, generating more of a delay. This delay adds to the backlog at the USPTO, which has its own negative impact on patent quality.

(6) The BRI standard is fatally ambiguous. Other than the mantra "broadest reasonable interpretation," there simply is no articulation of how to accomplish this step other than that it should be consistent with the teachings in the specification.

The paper concludes:

The BRI standard has probably lasted this long because its propriety has not been closely questioned. Closer scrutiny leads to the conclusion that there is simply no justification for the "broadest reasonable interpretation" standard. In fact, the standard has the potential to do significant harm. The BRI standard is a judicial construction created by the CCPA and currently used by the Federal Circuit. The Federal Circuit should stop using the standard and officially adopt a unitary approach to claim interpretation, regardless of forum.

Read/download the paper gere (link)

2 Comentários:

Anonymous said...

One rationale for applying the BRI standard is that the claims can be amended during prosecution. However, this is not the case in a reexamination of an expired patent. The Board, in unpublished and non-precedential opinions, have applied the narrower construction instead of the BRI standard when interpreting claims during reexamination of an expired patent. See Ex Parte Neefe (PTOBPAI 2007); Ex Parte Bowles, 23 USPQ2d 1015 (PTOBPAI 1991); Ex Parte Papst-Motoren, 1 USPQ2d 1655 (PTOBPAI 1986). Just another reason how different claim interpretation standards is confusing!

Katie said...

This is true, but we may have to consider the practicality of getting the same standard. The PTO is already backed up and examiners aren't lawyers so there isn't sufficient time for claim construction. Hundreds of hours can be spent on claim construction in court. Even then, there is a good chance the Federal Circuit will overturn it anyway. The time and resources do not exist in the PTO, but if you are willing to present evident to them, they should consider it.

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