Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent application intended, in order to make a rejection of the claims during patent prosecution. Available options for response include to argue, or amend the claim and argue. What are the pros and cons of each?
Arguing the claim interpretation, from a definition or context in the specification, prevents the loss of equivalents that may occur if a claim is amended. This should preserve the maximum breadth of claims coverage, if this approach works. But, the examiner may accept this, or may continue the rejection, arguing that the specification is not imported into the claims and staying with the previous interpretation of the claim language.
Amending the claim, to bring in a definition or narrowing limitations for the claim term, with support in the specification, can overcome an examiner interpretation of the claim that is overbroad, overreaching, misconstrued, or that refuses to recognize the specification. The amended claim may be subject to loss of equivalents, and all of the usual cautions about claim language for amendments apply. If the claim has already been amended, there may be less concern about surrender of equivalents, and amending the claim may be the more pragmatic approach in circumstances involving an entrenched examiner, anyway.
An examiner interview is an opportunity to present arguments of claim interpretation based on the specification, to see if that line of reasoning can prevail, prior to offering a claim amendment. There is always the option of appeal, should the above approaches not progress the application. Clients that want to preserve a crown jewel, and equivalents in the claims, may prefer arguing without amending, and proceeding to appeal if a claim rejection is continued. Clients that seek to obtain an issued patent with fewer delays and costs may prefer narrowing claim amendment and avoidance of appeal.
Takeaways Broadest reasonable interpretation of claim terms in light of and consistent with the specification is the standard. Arguing claim interpretation from the specification, without claim amendment, preserves equivalents in the claim. The specification is not imported into the claim. Amending a claim can overcome problematic interpretation of a claim term, but may lose equivalents. Examiner interview may give insights about arguing versus amending. Appeal is available, but adds time and costs.