USPTO Changes Claim Construction Standard for Patent Trial and Appeal Board (PTAB) Proceedings


The United States Patent and Trademark Office (USPTO) has discarded the “broadest reasonable interpretation” claim construction standard for PTAB proceedings effective for petitions filed on or after November 13, 2018.

The USPTO, in a final rule (a copy of which may be accessed here), has changed the claim construction standard to be used by the PTAB in inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings. This new standard is described as the same standard used by U.S. courts – as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny.

In addition, the PTAB will consider 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.

As this rule is narrowly drawn to PTAB proceedings, this new standard will not be used by patent examiners in assessing the patentability of patent applications. Examiners will continue to use the “broadest reasonable interpretation” standard.

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 November 13, 2018.

The invalidation standards—a preponderance of the evidence (PTAB) and the relatively higher clear and convincing evidence standard (federal courts)—remain unchanged.

For more information on our PTAB practice, please contact us.