The USPTO has changed the claim construction standard to better reflect the difficulty patent owners have experienced in amending claims in AIA trials. It recently "published a final rule changing the claim construction standard applied during inter partes review (IPR), post-grant
review (PGR), and the transitional program for covered business method
patents (CBM) proceedings before the PTAB.
The final rule replaces the “broadest reasonable
interpretation” standard with the federal court claim construction standard
that is used to construe a claim in a civil action under 35 U.S.C. §
282(b). This is the same claim construction standard articulated in Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny.
Additionally,
under the final rule, when construing a claim term in an IPR, PGR, or CBM,
the PTAB will take into consideration any prior claim construction
determination that has been made in a civil action, or a proceeding before
the International Trade Commission (ITC), if that prior claim construction
is timely made of record in that IPR, PGR, or CBM.
The USPTO received a total of 374 comments from individuals,
corporations, associations, law firms, and law professors in response to
its May 9, 2018, Notice of Proposed Rulemaking (NPRM). A significant
majority of comments supported the proposed change. As noted in the rule
package, the change will lead, among other things, to greater consistency
and harmonization with the federal courts and the ITC and lead to greater
certainty and predictability in the patent system. The final rule
adopts the proposed rule language set forth in the NPRM, with a few changes
for clarification purposes.
Several comments questioned the proposed
“retroactive” application of the rule. In response to these comments, the
final rule will not be retroactively applied and instead will apply only to
IPR, PGR, and CBM petitions filed on or after the effective date of the
final rule, which is Nov. 13, 2018."
If you are interested in the background and details of this change to claim construction, see the Federal Register Final Rules.
Copyright © 2018 Robert Moll. All rights reserved.
