How to Use Broadest Reasonable Interpretation to Your Advantage in Patent Prosecution

Establishing Scope of Claims, Avoiding Sect. 112(f), Preserving Enforceability

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, March 9, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide guidance for patent prosecution in light of the BRI standard. The panel will examine not only recent Federal Circuit decisions but will take a look at decisions from the USPTO’s Patent Trial and Appeal Board that provide practical lessons for using BRI to your advantage in prosecution.

Description

Patent examiners often interpret claims in a way that practitioners think is broader than what is reasonable, but lack tools to fight. However, PTAB and Federal Circuit cases show that there are limits to how examiners can use the BRI in patent prosecution. The rulings underscore the importance of making focused arguments highlighting the ordinary and customary meaning of claim terms consistent with the specification and drawings.

As an example, 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.

This case and others show how patentees and their counsel should carefully consider the plain and ordinary meaning of claim terms in light of the patent specification.

Listen as our authoritative panel of patent attorneys examines the BRI standard and how it is being applied. The panel will also discuss the recent Federal Circuit decisions and offer practice tips for claim drafting.

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Outline

  1. BRI standard and how it’s being applied
  2. PTAB and Federal Circuit decisions
  3. Practice tips for claim drafting

Benefits

The panel will review these and other key issues:

  • What guidance do Federal Circuit and PTAB decisions give patent counsel on the application of BRI?
  • What arguments are effective in overcoming patent examiners’ unreasonable claim interpretations?
  • 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?

Faculty

Bieneman, Charles
Charles Bieneman

Member
Bejin Bieneman

Prior to forming the firm, an IP boutique serving clients nationally and internationally, Mr. Bieneman was a partner in...  |  Read More

Christopher Francis
Christopher Francis

Partner
Bejin Bieneman

Mr. Francis specializes in preparing and prosecuting U.S. and foreign patent applications as well as counseling clients...  |  Read More

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