May 8, 2018

USPTO Considers Replacing Broadest Reasonable Interpretation Standard in IPRs & PGRs

In widely publicized comments to the U.S. Chamber of Commerce last April, new USPTO Director Andrei Iancu encouraged stakeholders in Inter Partes Review (IPR) and Post-Grant Review (PGR) proceedings to “reduce the hyperbole and look at the process with fresh eyes, in order to understand its true benefits and true challenges. This is what we are now doing at the USPTO.

Well, those fresh eyes did not take long to produce potential changes. Today, the USPTO provided notice of proposed rulemaking regarding potential changes to the claim construction standard for interpreting claims in trial proceedings before the Patent Trial and Appeal Board (PTAB).

Specifically, May 9, 2018, opens a 60-day comment period regarding a potential change to PTAB rules to replace the broadest reasonable interpretation standard (BRI) with the standard that is applied in federal district court and ITC proceedings.

In addition, the USPTO proposes to amend the PTAB rules to add that the PTAB will consider any prior claim construction determination concerning a claim at issue. That includes prior determinations in civil actions, ITC proceedings, or prior PTAB trial proceedings.

In the comments accompanying the potential rule change, the USPTO cites the following factors as underlying the effort to reconsider the claim construction standard in PTAB proceedings:

  1. Minimizing differences between PTAB proceedings and other patent proceedings could lead to greater uniformity and predictability of the patent grant;
  2. Using the same standard could help increase judicial efficiency overall;
  3. The high degree of overlap between patents that are considered at the PTAB and those that are the subject of federal litigation favors using a consistent claim construction standard; and
  4. Increase fairness by eliminating the situation where a patent claim could be found unpatentable in a PTAB proceeding on account of a claim scope that the patent owner could not assert in the federal courts.

To be sure, this notice does not mean that the claim construction standard will be changed. But, the fact that the notice was provided, as well as the overall tenor of its contents, leaves one with the strong impression that the USPTO is leaning towards this change.

Let the roller coaster ride continue!