May 8, 2018
Today the USPTO released a notice of proposed rulemaking that would significantly alter the claim construction standard used in post-issuance proceedings. The USPTO currently applies the broadest reasonable interpretation (BRI) claim construction standard in many post-issuance proceedings such as inter partes reviews, covered business method proceedings, and post-grant reviews. The proposed rules include two changes. First, the USPTO would adopt the same claim construction standards applied in Article III federal courts following Phillips v. AWH Corp., and second, the USPTO would consider any prior claim construction determination from a civil action or an ITC proceeding. The USPTO will accept comments for 60 days before deciding whether to adopt the proposed changes.
The USTPO currently applies the BRI claim construction standard to patent claims that will not expire during the post-issuance proceedings. Under this standard, claim terms are given the broadest interpretation that the specification reasonably supports, irrespective of whether developments in the original prosecution of the patent—or evidence extrinsic to the patent record—might have directed a narrower interpretation. This is the same standard applied during original prosecution of patent claims at the USPTO. The USPTO originally justified this standard for post-issuance proceedings on the basis that these proceedings allow patent owners to amend their claims. However, critics argue that the BRI approach has led to a lack of predictability and unreasonably high patent invalidation rates, particularly when the USPTO has, in practice, allowed very few claim amendments.
The claim construction standard differs for expired patent claims in post-issuance proceedings, in ITC proceedings, and in district court litigation. In those scenarios, claim terms are given their ordinary and customary meaning, as would be understood by a person having ordinary skill in the art in view of the entire intrinsic record and also relevant extrinsic evidence such as expert testimony. The claim construction principles set forth in the Phillips case and related decisions have tended to yield narrower claim interpretations that are more closely aligned with the disclosed invention and the patent prosecution file history evidence.
The proposed rulemaking notes that minimizing differences between claim construction standards used in the USPTO and in the district courts and ITC could lead to greater uniformity and predictability in the scope of a granted patent. This is important, according to the USPTO, because about 86 percent of patents challenged in post-issuance proceedings were asserted in litigation. The USPTO notes that post-issuance proceedings under current claim construction standards can lead to patent claims being found unpatentable based on claim scope that the patent owner could not assert in a district court or ITC infringement proceeding.
The proposed rules are a significant development that could potentially make certain patents more difficult to invalidate through post-issuance proceedings.
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