istock-824713698ismailciydem
9 May 2018Patents

USPTO seeks to ditch BRI standard

The US Patent and Trademark Office (USPTO) has published a notice of proposed rulemaking to change the claim construction standard used in Patent Trial and Appeal Board (PTAB) proceedings.

The changes would affect how the office interprets claims in inter partes reviews, post-grant reviews and the transitional programme for covered business method patents.

Currently, the broadest reasonable interpretation (BRI) standard is used by the PTAB in construing unexpired patent claims and proposed claims in the America Invents Act (AIA) trial proceedings.

The office hopes that the proposed change will ensure consistency in claim construction between the PTAB, district courts and the International Trade Commission (ITC).

District courts use the Phillips standard, which defines a claim construction by how a person of ordinary skill in the art would interpret the claim.

The office said that it “proposes to replace the BRI standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and ITC proceedings”.

While the BRI standard is consistent with agency practice, the office said that a different construction standard to the one used by federal district courts and the ITC means that decisions construing the same or similar claims may be different from those in the AIA trial proceedings.

“Minimising differences between claim construction standards used in the various fora could lead to greater uniformity and predictably of the patent grant,” said the USPTO.

In addition, using the same claim construction would also help address potential unfairness that could result from using a broader standard in AIA trial proceedings, said the USPTO.

“According to some patent owners, the same claim construction standard should apply to both validity (or patentability) determination and infringement determination,” the office added.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today’s top stories

Burberry takes aim at Target in trademark infringement claim

Frida Kahlo brand paints ancestor as TM infringer

Starbucks-Nestlé licensing deal: the IP impact

Barnes & Thornburg expands IP team

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Patents
10 November 2016   Depending on where you sit, inter partes review purges bad patents and stops ‘trolls’, or discards good patents by testing them not for what they are, but what they are not. Charles Shifley of Banner & Witcoff sheds some light on the controversy.
Patents
11 October 2018   The Phillips claim construction rule will replace the “broadest reasonable interpretation” standard in America Invents Act proceedings at the Patent Trial and Appeal Board, it has been confirmed.