Patenting for Inventors Ep. 178: Why Patent Examiners and Judges Don't Read Your Patent the Same Way
When you file a patent application, the Patent Office examines your claims using the Broadest Reasonable Interpretation (BRI)—reading them as broadly as reasonably possible based on your written description. This can feel frustrating when an examiner rejects your claim for a reason you never intended. But here's the key: the same patent claims are interpreted very differently once your patent issues and you're in court.
If a patent infringement dispute reaches the courtroom, a judge applies the Phillips standard, which focuses on what the claim means in context—the specification, drawings, prosecution history, and what a person skilled in your field would have understood. “The word didn't change. The setting did.” During examination, you can amend your claims to clarify your invention. After issuance, you generally cannot. In this episode, Adam Diament breaks down why understanding these two standards and thinking carefully about your claims before you file is so important.
Patenting for Inventors Ep. 178:
Podcast Transcript:
Hello, and welcome to the Patenting for Inventors podcast. I’m your host, Adam Diament, a registered patent attorney and partner at Nolan Heimann in Los Angeles, California. Today’s episode is Why Patent Examiners and Judges Don’t Read Your Patent the Same Way.
Today we’re talking about why a patent examiner and a judge may read the exact same patent claim differently. That may sound confusing, so let’s start with the basics. When you apply for a patent, you write something called a claim. A claim is a sentence that defines what your invention legally covers. Think of a claim as a fence around your invention. For example, imagine you invented a water bottle with a built-in temperature sensor. Your claim might say: “A bottle with a sensor that measures the temperature of the liquid.” That claim is the fence. Everything inside the fence is potentially protected. Things outside the fence may not be.
The exact words in the claim matter a lot. If the words are broad, the fence may surround many different products. If the words are narrow, the fence may protect only a very specificversion of your invention. Now imagine that you receive a rejection from the Patent Office. You read it and think: “That is not what I meant. Why is the examiner reading my claim that way?” This happens because patent applications and issued patents are interpreted under different standards.
While your patent application is still being examined, the examiner generally uses something called the Broadest Reasonable Interpretation, often shortened to BRI. That sounds intimidating, but it has a simple meaning. The examiner tries to read your claim as broadly as reasonably possible, based on the explanation in your patent application. “Broadest” does not mean the examiner can make up any interpretation they want. The interpretation still has to be reasonable and consistent with your written description and drawings.
Let’s go back to the bottle example. Suppose your claim says: “A container with a temperature sensor.”
The examiner may interpret “container” broadly. It could include:
a water bottle;
a coffee mug;
a thermos;
a medical container; or
another type of vessel.
If the examiner finds an older patent showing a coffee mug with a temperature sensor, the examiner might use it against your claim. You might respond: “I was talking about a bottle designed to be carried while exercising, not every possible container.”
The examiner might then say: “If that is what you mean, add those details to the claim.”
You could amend the claim to say: “A handheld water bottle configured to be carried during exercise, the bottle comprising a temperature sensor.”
That makes the claim narrower and may avoid the older coffee-mug patent. This is one reason the Patent Office uses BRI during examination. You are still allowed to amend your claims. You can clarify what you mean, add limitations, and adjust the boundaries of your invention.
The basic idea is:
If you mean something narrower, say so clearly in the claim. Words that sound ordinary can have broad legal meanings.
For example, a claim might say that a device is:
“configured to” perform a function;
“adapted to” perform a function; or
“capable of” performing a function.
Those phrases may sound specific, but sometimes they are not as limiting as inventors expect.
Suppose your claim says: “A phone case capable of holding a credit card.”
An examiner might find an older phone case with a pocket that could hold a credit card, even if the older patent never discussed credit cards. The examiner may say that the old pocket was capable of holding one. That can feel unfair because you may have been thinking about a specially designed credit-card holder. But if the claim only says “capable of holding a credit card,” the examiner may read it broadly. This is why patent attorneys spend so much time discussing definitions, examples, alternative versions, and specific structures. The goal is to make clear what the words mean and what they do not mean. The specification is the written part of the patent application. It explains how the invention works and describes different versions of it. The specification acts like an anchor for claim interpretation.
Imagine that your claim uses the word “vehicle.” Without context, that word could include many things:
a car;
a truck;
a motorcycle;
a golf cart;
a scooter; or
perhaps even a skateboard.
But if your specification repeatedly explains that the invention is a four-wheeled, motor-powered passenger vehicle, that context helps limit what “vehicle” reasonably means. On the other hand, if the specification barely explains the invention, the examiner may have more room to interpret the claim broadly. That is why trying to save money by writing a very short or vague patent application can create problems later. A thin specification may give you less support for arguing that a term has a particular meaning.
A strong specification should explain:
what the invention is;
how it works;
different ways to build it;
different materials or components that may be used;
what problem it solves; and
what alternatives are possible.
You can think of the specification as defining the size of the sandbox. The examiner may move around within that sandbox, but the specification helps determine where the edges are. Now let’s compare that with what happens after the patent issues. If someone is accused of infringing your patent, the dispute may go to court. At that point, a judge interprets the claims under a standard commonly associated with a Federal Circuit case called Phillips. The judge looks at the claim language, but also considers the rest of the patent and the history of the application.
This includes:
the claims;
the specification;
the drawings;
the prosecution history, meaning the back-and-forth with the Patent Office; and
sometimes technical evidence from people skilled in that field.
The judge is trying to determine what a person of ordinary skill in that technology would have understood the claim to mean when the patent was written. The court is not asking: “What is the broadest possible meaning of this word?”
The court is asking: “What does this claim mean in the context of this patent?”
Let’s return to the word “vehicle.” During examination, the examiner may reasonably interpret “vehicle” broadly enough to include a car, truck, motorcycle, or scooter. If an older patent discloses one of those things, you may receive a rejection. After the patent issues, a judge may look at the specification and determine that “vehicle,” in this particular patent, refers to a four-wheeled passenger vehicle. The word did not magically change meaning. The setting changed. During examination, the applicant has an opportunity to clarify and amend the claim. After the patent issues, the public needs to know what the patent covers. The court therefore focuses more closely on the patent’s language, technical context, and prosecution history. That is why the process can feel inconsistent even though the different standards serve different purposes. During examination, a rejection is not always the end of the road.
You may be able to respond by:
explaining why the examiner’s interpretation is unreasonable;
pointing to language in the specification;
adding a structural limitation;
narrowing a functional limitation;
distinguishing the prior art; or
amending the claim.
For example, suppose your original claim says: “A device that cools a beverage.”
That could cover many things, including a refrigerator, an ice pack, or a chemical cooling system. You might amend it to say: “A portable device having a battery-powered fan and a thermoelectric cooling element configured to cool a beverage container.”
That version is narrower, but it gives the examiner a much clearer picture of what you actually invented. Once a patent issues, however, you generally cannot simply rewrite the claims because a judge is interpreting them in an unfavorable way. The time to shape the claim is mainly duringthe examination process. Although BRI can make examination more difficult, surviving examination under a broad interpretation can also be helpful. If your claims survive after the examiner has considered a broad reading and relevant prior art, that may make the resulting patent stronger.
In court, the claim may ultimately be interpreted more narrowly under the Phillips approach. But the prosecution process has already tested the claim against a broader range of possible prior art. This is one reason it is important to think about claim interpretation before filing, not only after receiving a rejection. The main lesson is that patent claims are not interpreted in a vacuum.
The same word can have different practical consequences depending on:
whether the application is still pending;
whether the patent has issued;
what the specification says;
what the drawings show;
what the applicant said during prosecution; and
how a person skilled in the field would understand the language.
If you are an inventor, focus on three things:
First, make the claims precise enough to communicate what you actually want to protect.
Second, use the specification to explain your invention thoroughly, including alternatives and examples.
Third, do not panic when an examiner reads a claim more broadly than you expected. That is part of the examination process, and you may have an opportunity to clarify or amend the claim.
Understanding the difference between BRI and the court’s claim-interpretation approach can make patent prosecution much less mysterious. That’s it for today’s episode. I’m Adam Diament, and if you need help filing a patent application or protecting other intellectual property, you can call me at 424-281-0162. Until next time, I’m Adam Diament. Keep on inventing!