A patent prosecutor cannot know how a claim will be interpreted years after a patent issues, and must live with the nightmare possibility that a district court or the PTAB will find that the “broadest reasonable interpretation” (BRI) of a claim renders the patent invalid. In everyday practice, meanwhile, he or she must continually balance the desire to win a broad claim construction from the USPTO (to preserve future enforceability) with the need to tighten the scope (to avoid the prior art).
The panel, which includes a USPTO expert and two patent prosecutors, will discuss practice tips for finessing the issues posed by BRI for patent prosecutors, relying on several PTAB and BPAI decisions of ex parte appeals. They also will discuss how to make sure an issued patent is not caught unexpectedly in the future by Section 112(f), and how to make the best of an existing application in which the specification is lacking but not open to broadening without a loss of priority date.
Speakers:
- Charles Bieneman, Bejin Bieneman PLC
- Sameer Gokhale, Oblon, McClelland, Maier & Neustadt, LLP
- Joseph Weiss, USPTO
