Imagine That IP Law Blog

Broadest Reasonable Interpretation (BRI), as applied during USPTO examination, is often described as a “broad” claim construction standard. That description is accurate as far as it goes, but it is incomplete in a way that routinely drives avoidable disputes in prosecution. The controlling point is the one many applicants quote back to the Office: “The broadest reasonable interpretation does not mean the broadest possible interpretation.” MPEP § 2111. The difference between “reasonable” and “possible” is where the Person Of Ordinary Skill in Art (POSITA) does the most doctrinal work.

At a high level, the POSITA is the interpretive lens through which the USPTO determines what is “reasonable.” BRI is not a license to read claim language in isolation, nor is it a license to pick any meaning that can be linguistically squeezed out of a word. The Federal Circuit has been explicit that, “[w]hile the broadest reasonable interpretation standard is broad, it does not give the [Examiner] an unfettered license to interpret the words in a claim without regard for the full claim language and the written description.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). That line is not merely rhetoric. It is the doctrinal instruction that BRI must remain tethered to how a skilled reader would understand the claim terms when read as part of the entire patent document.

The central practical implication is that BRI is applied from the standpoint of a technically competent reader, not a purely literal one. The point of reference is what a person of ordinary skill in the art would understand the term to mean in context, with the specification supplying the relevant technical context. The Federal Circuit’s instruction in In re Smith International captures the “direction of travel” for this analysis and corrects a common examiner framing. The inquiry is not whether the specification “proscribes or precludes” the examiner’s broad reading, and it is not satisfied merely because the reading is “not inconsistent with the specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (internal citations omitted). Rather, the construction must be one that “corresponds with what and how the inventor describes his invention in the specification,” meaning it must be “consistent with the specification.” Id.

This is precisely where the POSITA matters. A POSITA does not read claim terms as free-floating labels. A POSITA reads the words as they are used in the patent, with an appreciation for how the technology works and how the disclosure deploys the terminology. That does not mean the specification automatically narrows the claims to a preferred embodiment, and it does not mean prosecution claim construction becomes an exercise in importing limitations. It means that the outer boundary of “broad” is set by what a skilled reader would accept as a technically coherent reading of the claim language in light of the written description.

Two additional Federal Circuit statements reinforce the constraint in terms that are particularly useful in prosecution. First, “The broadest-construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Second, “the PTO’s interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art.” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). Together, these statements underscore that BRI operates within a skilled-artisan ecosystem: breadth is permitted, but it must remain anchored to the invention as described and to how the relevant technical community uses the terminology.

In prosecution, this framework becomes most valuable when an examiner’s construction is “broad” in the sense that it detaches from how the patent uses the term. Applicants sometimes respond by trying to prove that the examiner’s reading is forbidden by the specification, as if the standard were “show me where the spec excludes it.” In re Smith International explains why that is the wrong battlefield. The better move is to show that the examiner’s reading fails the affirmative requirement: it does not “correspond with what and how the inventor describes his invention in the specification,” and it is therefore not “consistent with the specification.” 871 F.3d at 1382–83. That is a POSITA argument. You are not saying the claim “could never” be read that way in English. You are saying a skilled reader, reading the term as used in this disclosure, would not treat that reading as a reasonable construction of the claim language.

TriVascular adds a second, complementary point that is often underutilized. The examiner must construe claim terms “with regard for the full claim language and the written description.” 812 F.3d at 1062. This is important because “overbroad” constructions frequently arise from ignoring the claim’s internal context. A term that might be expansive in isolation can become meaningfully bounded when read alongside neighboring limitations, claim structure, and the way the claim recites interactions among components. Again, the POSITA lens is doing the work. A POSITA recognizes when a proposed meaning would make the claim internally incoherent, technically nonsensical, or at odds with how the disclosure describes the system’s operation.

The takeaway is also clearer when you contrast prosecution era BRI with the district court framework most practitioners associate with Phillips. Under Phillips, claim terms are generally given the meaning they would have to a POSITA in view of the intrinsic record, with an emphasis on the specification and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312 to 17 (Fed. Cir. 2005) (en banc). The exercise under Phillips is aimed at identifying the best supported construction in context, rather than selecting the broadest among multiple reasonable options. Id. at 1312 to 15.

BRI, by contrast, is expressly a prosecution facing rubric. Even though BRI is broad, it does not authorize the Office to interpret claims without regard to the full claim language and the written description, nor does it permit constructions that are merely not inconsistent with the specification. Instead, the Office may adopt the broadest interpretation that remains reasonable and consistent with the specification, and that principle is reinforced by the Federal Circuit’s reminder that even the broadest construction rubric does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.

In practice, both frameworks are POSITA centered and grounded in the intrinsic record, but they can diverge at the margins because they answer different institutional questions. BRI is designed for examination, where claim scope can still be clarified by amendment, and it therefore tends to resolve close interpretive questions toward breadth, so long as the construction is still reasonable in view of the disclosure. MPEP § 2111. Phillips is designed for adjudication, where the court’s task is to fix claim meaning for infringement and validity disputes based on the record as issued, and it therefore tends to focus on the meaning the term most naturally carries in the patent’s context rather than on the outer edge of reasonableness. This contrast explains why BRI disputes are often won by showing that the examiner’s construction is not merely broad but untethered from how the inventor used the term and how a POSITA would read the claim as a coherent technical statement, while Phillips disputes more often turn on why one construction is better supported by the intrinsic evidence than the competing alternative.