USPTO Enacts New Rule Governing Claims Construction, Will Narrow Interpretations at PTAB

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USPTO Enacts New Rule Governing Claims Construction, Will Narrow Interpretations at PTAB

By |2018-11-09T17:10:52-06:00November 1, 2018|

The U.S. Patent and Trademark Office announced a rule change governing proceedings at the Patent Trial and Appeal Board (PTAB) that will take effect Nov 13, 2018. The new rule will adopt the Phillips standard that construes patent claims based on their “ordinary and customary meaning,” rather than the “broadest reasonable interpretation” (BRI) standard now followed by the PTAB. This is expected to bring PTAB considerations more in line with how the courts and the International Trade Commission interpret patent claims.

The “Phillips standard” was first articulated by the Federal Circuit Court in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Under Phillips, claims are construed based on their “ordinary and customary meaning,” which is considered much narrower than the BRI standard now followed at the PTAB.

Broader construction of the claims under the BRI standard is one reason that post grant review and inter partes review proceedings at the PTAB have been attractive to those seeking to invalidate a patent. A broader construction of claims means that more prior art may be available. After the new rule is implemented, the same standard will be used to construe the claims of a patent in both trial venues.

The PTAB will continue to be an attractive venue for plaintiffs seeking invalidation of a patent through post grant reviews and inter partes reviews. For example, this rule change will not affect the burden of proof requirement at the PTAB, which will remain lower than in courts. The PTAB continues to evaluate invalidity by the “preponderance of evidence” while the courts require “clear and convincing evidence.”

For more insight on how this change may impact your patents and defense strategies, contact Juhasz Law.

About The Juhasz Law Firm

The Juhasz Law Firm provides intellectual property legal services to leading technology, software and clinical diagnostic companies.

Combining deep IP experience and broad IP capabilities across a wide spectrum of industries and technologies, The Juhasz Law Firm collaborates with clients to reveal, understand and capitalize on the strategic value of intellectual property. We call this Guiding Your Patent Beyond The Horizon (SM).

Paul R. Juhasz, J.D. is a leading patent attorney specializing in strategic preparation, prosecution, counseling, monetization and litigation, with degrees in electrical engineering and chemical engineering.

He is an adjunct professor at the New Hampshire School of Law, is extensively published, and an expert on 101 Bilski, Mayo and Alice patent eligible subject matter and patent exhaustion. He has submitted amicus briefs to the United States Supreme Court in several patent cases. As Director IP Nokia, he led the protection and enforcement of Nokia IP throughout North and South America. As assistant general counsel and chief IP counsel at Symbol, he chaired a joint defense group of companies in defeating the Lemelson patents.