Friday, October 7, 2016

Oh, patents! Plain meaning, huh?

Copyright © Fran├žoise Herrmann

Uh-huh, plain (ordinary and customary) meaning, and you betta believe it!....

The provisions of Chapter 2100, Section 2111.01  [R. 07-2015]  of the MPEP – Manual for Patent Examination Procedures set forth the plain meaning of the terms of patent claims, according to which:

“The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms.”

Just in case you are wondering about those “of ordinary skill in the art”.

 “The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention.” [MPEP Chapt. 2100, Section  2141, C.]

This hypothetical person is also used as the standard against which the specification of the invention is determined sufficiently complete, since it is those skilled in the art who must be deemed sufficiently informed to both “make and use” the claimed invention, in compliance with the enablement requirement of patents. [MPEP Chap. 2100, Section 2164]

However, there are a few more details involved in ascertaining the meaning of the terms of the claims, in reference to the specification, per the rules found in Chapter 2100, Section 2111.01 of the MPEP. 

 Indeed, consider the following supplemental rules in regards determining the plain (ordinary and customary) meaning of the terms of a patent claim.:

“It is improper to import claim limitation from the specification”.
 [MPEP Chapt. 2100, Section 2111.01,parag. II]

This means that the broadest possible meaning of a term is retained for interpretation of the claims section, even if the meaning is more restricted in the specification by way of an embodiment. For example, the Federal Circuit court ruled in Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004):

Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” 

However, if the plain (ordinary and customary) meaning of a term is explicitly defined (or refuted) in the specification, then the general rule, mentioned above, in regards the specification serving as best possible source for determining meaning, and especially when the specification serves as glossary, applies, since according to Chapter 2100 Section 2111.01, paragraph IV:

“The applicant may be own lexicographer and/or may disavow claim scope.”

This means that the applicant might define his own meaning of the terms used in the patent and thus perhaps limit or extend the scope of a claim. And it also means that an applicant might specifically refute the ordinary and customary plain meaning of a term, when disavowing the full scope of a claim.  In all cases, however, there has to be clear and non-ambiguous evidence in the specification that the ordinary and customary meaning is not effective. Otherwise, For example: In  Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005), the Federal Circuit reversed the district court’s construction of the claim term “about” as “exactly”.

” The appellate court explained that a passage in the specification the district court relied upon for the definition of “about” was too ambiguous to redefine “about” to mean “exactly” in clear enough terms. The appellate court held that “about” should instead be given its plain and ordinary meaning of “approximately.” [MPEP Chapt 2100, Section 2111, Parag. IV (A)]

Thus, to the extent that there are provisions for applicants to be lexicographers, then one might hope that applicants would want to proceed in this way, as a matter of more general practice, not necessarily for the purposes of refuting the customary and ordinary meanings of terms known to those of ordinary skill in the art, but precisely for the purposes of disambiguation, clarity and precision of the meanings of the terms used in claims.  Even, if perhaps, this would imply more widespread use of real glossaries within the specification, or a dedicated section to the definition of terms. Indeed, the inclusion of real, applicant-authored glossaries of the terms of the invention, within a patent specification, would really be great news for translators, terminologists, and machine translation designers too!
Now, if you still don’t believe plain meaning is regulated by a US Federal Agency… then, just check out the links to the MPEP, yourself! ­čĹá

MPEP Chapt 2100
MPEP Chapt 2100, Section 2111-01 Plain meaning
MPEP Chapt. 2100, Section 2141.03 Level of ordinary skill in the art
MPEO Chapt, 2100, Section 2164 The enablement requirement

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