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.
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