How does the prosecution history affect claim interpretation under BRI?

The prosecution history plays a significant role in claim interpretation under the broadest reasonable interpretation (BRI) standard. MPEP 2111 states:

“The prosecution history of the application is relevant to determining the meaning of the claims.”

This means that statements made by the applicant during prosecution, including amendments and arguments, can limit the scope of claim interpretation. For example:

• If an applicant narrows a claim to overcome a rejection, they may be precluded from later asserting a broader interpretation.
• Explicit disavowals or disclaimers of claim scope in the prosecution history will be considered when determining the BRI.
• Consistent usage of terms in the specification and during prosecution can inform the proper interpretation of those terms in the claims.

Examiners and courts will consider the entire prosecution history when interpreting claims under the BRI standard to ensure consistency with the applicant’s representations and to prevent the recapture of surrendered subject matter.

To learn more:

• prosecution history
• claim interpretation
• broadest reasonable interpretation
• file wrapper estoppel