How does claim interpretation differ between patent examination and court proceedings?
Claim interpretation differs significantly between patent examination and court proceedings. During patent examination, the USPTO applies the broadest reasonable interpretation (BRI) standard, while courts use a different approach for infringement and validity cases.
According to MPEP 2111:
“Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. In contrast, an examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim.”
This difference in approach is due to the different contexts and purposes of examination versus litigation. During examination, the goal is to clarify the scope of the claims and ensure they are properly limited, while in court proceedings, the focus is on determining infringement or validity based on the issued patent and its prosecution history.
To learn more: