The inspiration for this blog comes from the informative Patently-O, which recently carried a post regarding the subject of “broadest reasonable interpretation” of claims in patents in the US.

In the specific case being commented on, a patent application had a claim that included a “wireless communication module”. The USPTO argued that the broadest reasonable interpretation of the term “wireless communication” includes communication with wires.

I’ll say that again. The USPTO held that the term “wireless communication” includes communication with wires. In particular, they argued that a first computer could save information to a removable flash drive which could then be removed and plugged into a second computer.

This is despite the actual application stating that the term “wireless” refers to “a communications, monitoring, or control system in which electromagnetic or acoustic waves carry a signal through atmospheric space rather than along a wire”.

The applicant appealed and the case went to the Federal Circuit who confirmed that the interpretation applied by the USPTO was too broad and the interpretation of the meaning of “wireless” was straightforward.

The same applicant also has a patent application that requires streaming video. The USPTO held that this could be interpreted as the ability to send a series of e-mails which each include an image attachment. The Federal Circuit also found this interpretation to be unreasonable.

This is how Dennis Crouch explains the law:

“rather than applying the “correct” claim construction that would be applied to an issued patent, the USPTO examiners are tasked with construing pending patent claims according to their Broadest Reasonable Interpretation (BRI). By design, BRI is intended to be broader than the interpretation given by a court. The purpose of this approach is to offer an additional buffer zone between the prior art and the issued patent and to give the USPTO stronger tools to ensure that claims are not ambiguously written.”

Now of course, the “right” result was reached here, as the Federal Circuit concluded that the interpretation of the USPTO was too broad. However, it seems very unsatisfactory that this kind of effort, time and expense was required to reach this conclusion.

This kind of interpretation is quite a common factor in patent prosecution in the US. I remember a case I was involved in a few years ago where the term “stacked” was interpreted by the US Examiner as encompassing two items that were side by side. That was resolved in prosecution, but still felt like an argument we shouldn’t have been having. Too often in my opinion patent applications get caught up with this type of argument with USPTO examiners.

In a broader sense, it is also an unsatisfactory situation to consider the judgment of the USPTO as in some way “preliminary”, with the expectation that the courts will sort it out if there are any mistakes. This creates a bad dynamic – as we see here under the “broadest reasonable interpretation” practice, the examiners are encouraged to be over-enthusiastic in coming up with twisted interpretations of the language that is presented to them. At a more basic level, the feeling that some higher authority may intervene can only encourage sloppy behaviour. Patent applicants invest a lot in obtaining patent protection, and a granted patent represents a significant obstacle for third parties. So it is imperative that the USPTO aims to get it right first time.

In the meantime these problems can be avoided by careful drafting of patent applications, and by early telephone contact with the Examiners during prosecution of a patent application. We usually get there in the end, but this type of interpretation has a real impact on patent applicants.  Hopefully these Federal Circuit decisions will encourage a more “reasonable” approach going forward.