USPTO confirms that Phillips rule will replace BRI standard
The Phillips claim construction rule will replace the “broadest reasonable interpretation” (BRI) standard in America Invents Act proceedings at the Patent Trial and Appeal Board (PTAB), it has been confirmed.
The US Patent and Trademark Office (USPTO) announced on Wednesday, October 10, that it is changing the claim construction standard applied during inter partes reviews (IPRs), post grant reviews, and the transitional programme for covered business method (CBM) patents.
In May, the USPTO asked stakeholders for their views on potential changes to the claim construction standard used by the PTAB in those reviews.
Yesterday, following the submission of 374 comments from individuals, law firms, associations, corporations, and academics, the USPTO announced that “a significant majority” of those who commented supported the proposed change to the standard.
The change means that the PTAB will now assess patent claims using the same standard as that used by courts. It was developed in 2005 by the US Court of Appeals for the Federal Circuit in Phillips v AWH.
Under Phillips, the standard for claim construction is based on how a person of ordinary skill in the art would understand patent claims at the time that the invention was created.
However, the PTAB has been using the BRI standard in its examinations, under which patent claims are given their widest reasonable interpretation.
This is because applicants have the opportunity to amend claims during patent prosecution, and affording a claim its BRI reduces the chance that, once issued, the claim will be interpreted more widely than is justified.
In 2016, the US Supreme Court upheld the BRI standard amid calls for the PTAB to apply the Phillips standard instead.
Now, as announced yesterday by the USPTO, the “final rule” set out in Phillips will replace the BRI standard.
The USPTO said that the change will lead to “greater consistency and harmonisation with the federal courts and the International Trade Commission (ITC), and lead to greater certainty and predictability in the patent system”.
Justin Oliver, partner at Fitzpatrick, Cella, Harper & Scinto’s Washington, DC office, agreed: “With the PTAB’s adoption of the same standard applied by district courts, the claim construction record in one forum will likely have a more significant impact in the other.”
Under the new rules, the PTAB will also be required to consider any prior claim construction determination made in a civil action, or in proceedings at the ITC, in its reviews.
K&L Gates lawyers Jason Engel, partner in Chicago, and Elizabeth Weiskopf, associate in Seattle, noted that the PTAB is not bound by these prior claim constructions, but they may assist the board in adding uniformity and predictability to the patent system.
The USPTO has confirmed that the PTAB’s application of the rule will not be retroactively applied. Instead, it will apply only to reviews and CBM petitions filed on or after November 13, 2018.
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
US charges Chinese individual over trade secret theft
EU court sides with German tape manufacturer in TM opposition
