SusaZoom / Shutterstock.com
In the US two standards for construing patent claims are applied, but this could be about to change, say Ethan Horwitz and Shaun Hargadine of Carlton Fields.
The Patent Trial and Appeal Board (PTAB) is not quite a court and not quite an examiner and the question now before the US Supreme Court is whether the PTAB should use the courts’ or the examiners’ standard for claim construction.
In a court, the standard for claim construction is how a person of ordinary skill in the art would understand the term (the Phillips standard). By contrast, an examiner uses the broadest reasonable interpretation (BRI) standard. The reasons for each standard and why they are used, as well as the history of the PTAB’s standard, will be reviewed as will the issues now before the Supreme Court.
The claim construction standard used by courts in determining validity and infringement is how the claim term will be understood by the person of ordinary skill in the art. The US Court of Appeals for the Federal Circuit in the 2005 case Phillips v AWH noted that proper claim construction is informed by statute, namely the first and second paragraphs of 35 USC §112.
To continue reading, you need a subscription to WIPR. Start a subscription to WIPR for £455.
In-house feature articles, the archive and expert comment require a paid subscription. Subscribe now.
Want to give it a try? We are offering a two week free trial to the WIPR website – register and select “Free Trial” to begin access to the full WIPR archive and read the latest news, features and expert comment. Begin your free trial here.
Is your 2 week free trial about to end? Upgrade to a 12 month subscription for £455 now.
If you have already subscribed please login.
If you have any technical issues please email James Lynn on email@example.com.
Ethan Horwitz, Shaun Hargadine, BRI standard, PTAB, Cuozzo, CBM, AIA, USPTO, patent, Carlton Fields,