The Federal Circuit has issued several decisions that clarify how the broadest reasonable interpretation (BRI) standard should be applied in patent application prosecution. The rulings underscore the importance of using the ordinary and customary meaning of claim terms consistent with the specification and drawings. Further, the court seems to stress patent disclosure (via a patent search) when determining how broad of an interpretation is reasonable.
In D’Agostino v. MasterCard Int’l Inc. (Fed. Cir. Dec. 22, 2016), the Federal Circuit disagreed with the PTAB’s claim construction and demonstrated the limits of BRI when it concluded the PTAB departed from the clear meaning of “single merchant.” The court determined the PTAB improperly found the term to be broad enough to apply to the transactions in question.
Patentees and their counsel should carefully navigate disclosure of claim limitations and establishing the scope of the claims while maintaining the enforceability of the claims. The difficulty when drafting patent claims is balancing the desire to have an enforceable broad claim with the need to craft the claim in such a way that those opposing the patent will not prevail on a challenge.
Our panelists, including Charles Bieneman, Member at Bejin Bieneman, will provide guidance to patent counsel for drafting patent claims in light of the BRI standard. The panel will examine recent Federal Circuit decisions and offer best practices for claim drafting.
The panel will review these and other key issues:
- What guidance do recent Federal Circuit decisions give patent counsel on the application of BRI?
- Why is defining claim terms in 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?
or call 1-800-926-7926 ext. 10 (ask for Patent Prosecution: Broadest Reasonable Interpretation on 3/9/17 and mention code: PB1UJ1-U2NDAZ)