Broadest Reasonable Interpretation standard and Phillips standard are used by judges and examiners
Patent claims capture the scope of an invention and define the meets-and-bounds of protection available for the invention. A patent’s written description describes the invention and informs the meaning of the terms used in the patent claims. The USPTO interprets the meaning of words in the claims by referring primarily to the written description—and, on occasion, to other sources.
During the application process and before a patent is issued, claims are interpreted using the broadest reasonable interpretation (“BRI”) standard. During trial proceedings and after the patent is issued, claim language is, by default, given its plain and ordinary meaning, commonly called the Phillips standard of claim interpretation.
The BRI standard. In this consideration, examiners and Patent Trial and Appeal Board (PTAB) judges, during appeals of examiner rejections, give claim terms their ordinary usage as they would be understood by one of ordinary skill in the art. This standard provides for rigorous examination and minimizes the possibility of interpreting a claim more broadly than justified after a patent is issued.
An example: When a claim uses a value of “about 10,” the claim may be interpreted as covering values of nine to 11 if it would be reasonable for the ordinarily skilled artisan to do so.
Under the BRI standard, examiners and the PTAB also consider if the applicant provides his or her own definition of claim terms or phrases in the written description. For example, if an application related to portable computers defines “computer” in the specification as excluding a hand-held calculator, the examiner must apply that definition to the term computer when examining the claim. But without an express definition, the broadest reasonable interpretation of “computer” might include a calculator.
It is important to note the word “reasonable” in the BRI standard. “Reasonable” ensures that examiners and the PTAB do not interpret claim terms out of the context of the invention.
The Phillips standard. The PTAB conducts trials known as inter partes reviews and post-grant reviews to determine whether an issued patent satisfies the statutory requirements for patentability. In these trials, the PTAB applies the Phillips standard for claim interpretation.
Under the Phillips standard, claims are given their plain and ordinary meaning as would be understood by a person of ordinary skill in the art in view of the specification and the prosecution history. For example, in the context of an electrical connection, a “continuous connection” might require a continuous connection in time—i.e., always connected, or it might require a continuous connection in space, such as physical contact.
Under the Phillips standard, both connection in time and space might be necessary, while BRI might encompass the situation where connection in space or time only is required. Often, the written description must be consulted to understand and interpret the claims to sort out such questions.
In review: The BRI and Phillips standards are similar. But the Phillips standard includes review of the prosecution history of the application. So if the applicant makes a statement during prosecution of the application, such as an argument as to why the prior art cited by the examiner does not anticipate the claims, that type of statement could inform the meaning of claim terms and would be relevant after the patent issues during an IPR.