USPTO Issues Proposed Rules Changing Claim Construction Standard in Inter Partes Review

The United States Patent and Trademark Office (USPTO) on May 9, 2018, proposed changes to the claim construction standard for interpreting claims in Inter Partes Review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) in proceedings before the Patent Trial and Appeal Board (PTAB). The deadline to ensure consideration of written comments on the proposed changes is July 9, 2018.

The proposal replaces the “broadest reasonable interpretation” standard for construing patent claims with a standard that is the same as the standard applied in federal district courts and International Trade Commission (ITC) proceedings.

Also proposed is a rules amendment permitting the PTAB to consider any prior claim construction determination concerning a term in the challenged claim reached in a civil action, or in an ITC proceeding, that is timely made of record in an IPR, PGR or CBM proceeding. This is a significant change to current PTAB practice, and requires strategic planning in order to develop an effective IP strategy concerning these proceedings.

For more information on IPR practice before the PTAB, please contact us.