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One of the trends that I am seeing at the patent office is a tendency by Examiners to broaden the claims beyond the context provided in the specification. This allows references to be cited that would otherwise not read on the claims, if the claims were properly interpreted in light of the specification and the level of skill of a person having ordinary skill in the pertinent field. There was a time when precedent of the Court of Appeals of the Federal Circuit supported reading the claim language broadly, according to its plain meaning or a dictionary definition. That time has past. The precedent of the Federal Circuit and the U.S. Supreme Court has established that Applicant’s specification is the best source for determining what the claims mean. Thus, now more than ever, both the drafting of a system of claims that protects all of the aspects of the invention and the context provided by the written description are critical to obtaining the proper scope of protection in an application filed with the United States Patent & Trademark Office. The increasing importance of the specification for interpreting the meaning of the claims means that most clients will be better served by developing long term relationships with a competent, local patent counsel that develops an intimate knowledge of the technology and business goals of the client.
The claims of a patent set the scope of protection granted by the patent. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005). However, in construing what the claims mean, the patent office must determine what the claim language of the claims would have meant to a person having ordinary skill in the relevant art at the time of the invention within the context provided by the specification. Id. at 1313. According to precedent, the hypothetical “person of ordinary skill in the art” interprets the meaning of the claims after having read the entire patent and within the context of the patent as a whole. Id. The specification--and other intrinsic evidence, such as the prosecution history and the language of other claims--often provides the best indicator of the meaning of claim language. Id. at 1314-15. Provided that due caution is exercised to avoid reading limitations from the specification into the claims, the specification is "…the single best guide to the meaning of a disputed claim term…" and is usually dispositive. Id. at 1315 and 1323 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).
The patent protects the entire scope of the invention as stated in the claim, not merely the example or examples of the invention provided in the specification. See 415 F.3d at 1312. However, any interpretation of the claims must be equally careful to avoid reading the claims too broadly, as would be done if the claims terms are defined according to dictionary definitions rather than in the context of the specification. Id. at 1321. While extrinsic evidence, such as learned treatises and technical dictionaries, may be consulted, the purpose of such extrinsic evidence is limited. Extrinsic evidence merely provides "…background on the technology at issue, to explain how an invention works…” or ensures that the Examiner's “…understanding of the technical aspects of the patent is consistent with that of a person having ordinary skill in the art…” or establishes that a particular claim term has a particular meaning within the context of the specification or within the pertinent field. Id. at 1318. Again, the specification is the best source for determining the meaning of a claim term, and assertions of what a claim term means that are not supported by the specification, prosecution history or the prior art in the pertinent field are not useful. Id.
The strongest patent protection is provided by having competent, local patent counsel working closely with the inventors to describe the background of the invention and to prepare a written description that provides context to the language used in the claims. Development of the context needed to support the claims is enhanced by early and frequent contact between patent counsel and the inventors involved in the research and development process. Thus, the patent process benefits from a close proximity between a local patent counsel and the client. The failures and technical challenges faced during reduction of an invention to practice establish a context for defining the patentable features of the claims that are nonobvious over the state of the art at the time that the invention is made. The technical vocabulary developed during close collaboration between local patent counsel and the inventors is invaluable in the understanding of the invention and the defnition of the claim language used in the drafting of strong patent protection. Furthermore, a local patent counsel working closely with inventors is much more likely to be able to identify measurements and comparisons that may be made during evaluation of a new technology, which can be used to distinguish the new technology over the prior art, providing “objective evidence of nonobviousness” such as synergistic results or results that are surprising and unexpected, which is the sin qua non for patentability post-KSR.[1]
Finally, if an ongoing relationship exits between local patent counsel and both top management and the innovators of a client, then patent counsel is much more capable of identifying those particular discoveries and improvements over the prior art that warrant patent protection: inventions with features distinguishable over the known prior art, inventions having important applications within the field of the client or within a field of a potential licensee, and inventions that are aligned with the business goals of the client and support the business objectives of the client. When this type of integration of the client and local patent counsel is achieved, the drafting of a system of patent claims that are fully supported and adequately defined within the context of the written description of the specification is not difficult. The claim terms are defined using the language adopted by innovators within the particular field and defined by the written description, providing no room for abusive over-broadening by the patent office. More importantly, the scope of the claims protected by patenting is not selected merely for ease of patenting or for incremental improvements. Instead, a consistent framework is established for the language used in the claims within the context of the written descriptions across the entire patent portfolio, which strengthens all of the issued patents and pending applications within the enterprise’s intellectual property portfolio.
[1] In KSR v. Teleflex the U.S. Supreme Court overruled the Federal Circuit’s rigid application of the TSM test and instead relied on earlier precedent that patent examiners and the courts must consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness, when determining if a claim is nonobvious over the prior art. (For an introduction to patentability post-KSR see http://www.bpcouncil.com/apage/488.php.)
