1、 The necessity of research

（1） Importance

Claims are the soul of a patent, determining the scope of protection of the patent right

The interpretation of claims is also the core of claims, which is crucial in authorization, confirmation, and infringement procedures

（2） Universality

Technical terms, such as molecular weight, etc

Non technical terms, such as words that represent spatial and relational relationships, approximate terms, etc

2、 Main standards and examples

（1） Main standards

（2） Phillips standard

This includes what standards should be adopted when explaining, what evidence should be used, and how to use this evidence.

Prior to the Phillips case, there were two interpretation methods in US patent litigation:

(1) Internal evidence as the main evidence

The scope of the claims is mainly determined based on the claims themselves, the patent specification (including drawings), the examination file, and the cited prior art (represented by the Vitronics case (i.e. solder reflow temperature case))

(2) External evidence dominant

The scope of the claims is mainly determined by referring to expert testimony, ordinary dictionaries, and/or technical dictionaries (represented by the Texas case).

The Phillips case clearly affirmed one interpretation method and refuted the other.

1. Claims

The interpretation of claims should start from internal evidence. Firstly, consider the claims.

According to Section 112 (2) of the US Patent Law, the final paragraph of the application should include one or more claims, which should specifically state and clearly state what the applicant considers to be their invention.

According to this clause, the interpretation of the claims requires reference to the language used in the claims.

A fundamental principle of patent law is that the claims of a patent limit the scope of the invention, which is the exclusive right of the patentee. The manual does not have this function. Therefore, in order to accurately determine the scope of the granted patent right, the claims are important.

Due to the above provisions of the law, the patentee must accurately define the invention. If the interpretation is not based on the clear meaning of the claimed language itself, it is unfair to the public and also a evasion of the law.

Attention: Avoid reading content that is not limited by the claims into the claims.

Compared to the specification and examination files, claims are more important because they provide substantive guidance on the meaning of the language used in the claims.

The claim itself provides guidance on the meaning of one of the terms used.

The other claims of this patent also serve as a reference for the interpretation of this claim. Because the meaning of the same term should be consistent throughout the entire patent.

And the scope of the claims is usually different. For example, it can be inferred that independent claim 1 does not have the additional technical features of dependent claim 2, otherwise claim 2 is redundant.

2. Instruction manual

Section 112 (1) of the United States Patent Act stipulates that application documents shall include a written description of the invention, as well as the ways and processes of making and using the invention, and shall use comprehensive, clear, concise, and accurate terminology to enable those skilled in the art to make and use the invention

This clause requires the application documents to provide a specific description of the invention limited by the claims, therefore, the specification and claims are closely related and their contents are consistent.

Claims do not exist independently, they are part of a complete written legal document. The claims must be understood in conjunction with the specification. The explanation of the claims in the specification usually plays a decisive role and is a good guide to the meaning of the language used in the claims.

The instruction manual provides context

The specification can help determine the scope and meaning of the claims, as the expression of the claims is based on the description in the specification. The meaning of the language used in the claims is actually the meaning it has in a certain environment, which is its context, mainly the specification.

Help understand the inventor's intention

The meaning of the claims actually needs to clarify what the inventor's actual invention is and what the scope of protection is intended to be covered by the claims. The interpretation that is faithful to the claims and close to the invention described in the specification will ultimately become the correct interpretation.

Lexicographers may abandon certain scope

According to the above principles, the patentee can assign a special meaning to a term that is different from its ordinary meaning through the specification, and become their own dictionary compiler;

The patentee may also intentionally waive or deny certain scope of the claims through the specification. Therefore, it also affects the scope of the claims.

The United States Patent and Trademark Office also interprets it in conjunction with the specification

The interpretation basis used by the United States Patent and Trademark Office in reviewing patent applications includes not only the claims, but also the specification. Therefore, it is more necessary to interpret the claims in conjunction with the specification. Moreover, the United States Patent and Trademark Office also requires that the claims be consistent with the invention described in the specification, and that the language used in the claims be supported by the content of the specification.

Avoid limiting to implementation examples

Although the specification generally only describes very specific embodiments, do not limit the claims to these embodiments alone. Even if the specification only describes one embodiment, the claims should not be limited to that embodiment alone. Because the scope of protection is limited by the claims, and those skilled in the art will not limit the understanding of terminology solely to the embodiments.

Determine whether it is the preferred method or completely consistent

The instruction manual is intended to teach technical personnel in this field how to implement the invention and provide preferred methods. In most cases, after reading the application documents, it can be determined whether the embodiments are just examples or completely consistent with the scope of the claims. The way the patentee uses terminology in the specification and claims can indicate which situation it is.

3. Review archives

Prosecution history: It is a type of internal evidence that records all procedures of the United States Patent and Trademark Office and includes prior art cited during the patent examination process. The examination file reflects how the US Patent and Trademark Office and inventors understand the patent, and records the patentee's explanation of the application in order to obtain the patent.

The function has limitations

However, the examination file reflects the ongoing negotiations between the US Patent and Trademark Office and the inventor, rather than the final outcome of the negotiations. Therefore, it is not as clear as the application documents, and its role in interpreting the claims is not as important as the application documents.

Reviewing archives may narrow the scope of claims

However, the examination file can still reflect how the inventor understood the invention and whether the inventor further limited the invention during the examination process, thereby explaining the meaning of the claimed terms and potentially narrowing the scope of the claims.

That is to say, the meaning of being abandoned by the inventor in the examination file is not within the scope of the claims, and in this case, the scope of the claims is reduced due to the reference to the examination file.

4. External evidence

External evidence: all evidence outside of patents and examination files, including expert testimony, inventor testimony, dictionaries, and monographs.

Not as important as internal evidence

The court has the right to refer to external evidence, although external evidence may be helpful, it is far less important than internal evidence.

Dictionary and monograph

Dictionaries and monographs can help us understand the claims, as dictionaries, especially technical dictionaries, collect the meanings of terms accepted in various technological fields. Therefore, referring to dictionaries helps us understand relevant technologies and the meanings of the terms in this field.

Expert Testimony

Expert testimony can help us understand the background technology, comprehend the invention, align our understanding with those skilled in the art, or assist in determining the specific meaning of a term appearing in a patent or existing technology in that field.

Reliability varies

Dictionaries and monographs are objective materials available to the public before litigation, which are more reliable and unbiased compared to expert and inventor testimony.

Cannot refer to external evidence that conflicts with internal evidence

However, the meaning of any claims provided by external evidence that contradict internal evidence is unacceptable.

Reasons why external evidence is less reliable than internal evidence

Firstly, patents are generated during the patent application process to explain the scope and meaning of the patent, and external evidence does not possess such characteristics;

Secondly, external publications may not necessarily be written by or intended for technical personnel in this field, and therefore may not necessarily reflect their understanding;

Thirdly, expert reports and testimonies in external evidence are for the purpose of litigation and may be biased during the litigation process;

Fourthly, there will be a lot of external evidence submitted to the court, making it very difficult to screen useful external evidence;

Fifth, excessive reliance on external evidence may alter the meaning of terms determined by internal evidence, thereby weakening the publicity role of internal evidence.

Therefore, in order to interpret the claims, external evidence needs to be used in conjunction with internal evidence.

（3） Wide and reasonable explanation

Wide and reasonable explanation

During the patent examination process, a Broad Reasonable Interpretation should be provided based on the application documents for pending claims.

Need to consider the claims and specifications

The determination of the scope of protection of the claims is not only based on the language of the claims, but also on the broad and reasonable interpretation that can be made by those skilled in the art based on the specification.

Different from the standards of the court

The court procedures involving infringement and property rights confirmation do not adopt a lenient and reasonable interpretation, and the court can interpret based on a comprehensive review file. On the contrary, the examiner must establish a clear record of the scope of protection intended by the applicant based on a broad and reasonable interpretation method during the examination process.

Reasons for a broad and reasonable explanation

In the patent examination stage, adopting a broad and reasonable interpretation standard can form a record of the claims that the applicant truly wants to protect. Due to the opportunity for the applicant to modify the claims during the patent application examination, adopting a broad and reasonable interpretation can reduce the possibility of the interpretation of the claims exceeding the reasonable scope after authorization.

A broad and reasonable explanation is not necessarily a broad and possible explanation

Its meaning must be consistent with the ordinary and customary meaning of the term (unless the term has a special meaning in the application document), and must be consistent with the usage of the claimed terms in the specification and drawings, and must be consistent with the meaning that can be obtained by those skilled in the art.