Recently, the U.S. Patent and Trademark Office released a package of proposed procedural revisions affecting post-grant proceedings before the USPTO's Patent Trial and Appeal Board (PTAB), and conducted a three-city "roadshow" for discussion of the proposed changes. The proposed rules are available in the Federal Register, at 80 FR 50719- 50747, and public comments are open for 60 days from the announcement.

The proposed rule changes include allowing patent owners to submit expert declarations or other new testimonial evidence with their preliminary response, requiring a Rule-11 type certification by the parties' attorneys, replacing page counts with word-count limits for most papers, and clarifying claim construction standards and amendment procedures.

The last of these appears to be the most ripe for comment, as the USPTO adopts proposed rules to change the current standard of broadest reasonable interpretation (BRI) for cases near expiration, and to clarify the procedure for motions to amend the claims.

With respect to the former, the office proposes retaining the BRI standard for most cases, but applying an "ordinary and customary meaning" construction, as set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005), for cases in which the patent at issue will expire before a final written decision in the PTAB proceeding.

This change has produced a large number of widely varying comments on the proper construction for PTAB trials. The USPTO's rationale for keeping the BRI standard for most cases is two-fold, according to the USPTO Director's Forum blog: First, it is the standard used by the USPTO for over 100 years; and second, an inter partes review proceeding provides the patent owner "the opportunity to amend" its claims. The stated rationale for the office applying a Phillips-type construction for patents that will expire prior to the end of the PTAB proceeding is that they "essentially lack any viable opportunity to amend the claims in an AIA proceeding."

Some commentators have complained that the dual standard confuses the issue by having two standards, under which some patents will be treated differently than other patents, and the unfairness that may result. Other commentators have noted that reexamination proceedings in the USPTO have a similar, dual standard since Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986), which spelled out the BRI construction being used unless the patent at issue has expired, in which case a Phillips-style standard in applied. The reexamination standard thus differs only in that it applies a different standard for already expired patents versus the proposed rule applying to patents that will expire during the PTAB proceeding. However, as many have noted since the early AIA proposals regarding inter partes review in particular, it differs procedurally from reexamination, including the former inter partes reexamination.

Of particular relevance to this discussion is the related topic of the availability of the patent owner to amend claims during PTAB trial procedures, and how it differs from other office procedures. Inter partes reexamination gave a patent owner a broad right to amend and add patent claims during the course of the reexamination, including few restrictions on the number of claims and a greater number of opportunities to make such changes during the procedure. By contrast, in PTAB trials a patent owner has a single opportunity to file a motion to amend and a much higher standard to meet to amend claims.

The USPTO has recognized this difference, and believes the higher bar is appropriate in view of the examination difference between the procedures. In a case in which a motion to amend is granted during a PTAB trial, the amended claim becomes part of the patent without any further examination. Thus, the USPTO has rejected comments suggesting that motions to amend be liberally allowed.

However, looking at these various similarities and differences between USPTO procedures, their standards, and their purported rationales for those standards, one must question if the BRI standard is in fact the correct standard to apply in PTAB trials. The stated rationale has been that the patent owner has the opportunity to amend its claims - but in practice this has rarely been the case. Only six motions to amend in total have been granted by the PTAB as of June 2015 - a very small percentage of the whole.

The ability to amend was touted as a benefit of PTAB trials when the rules were being formed, but the rules governing PTAB trials do not provide an "opportunity to amend" as it is often articulated in discussions about the procedures. Rather, the rules mandate an opportunity to make one motion to amend but no promise of that motion being granted, and indeed it has not been granted most of the time.

One other way to look at this question is not to ask whether the BRI standard is the correct one to apply, but instead accept the standard as the rule for PTAB trials, and question the corresponding amendment procedure proffered as the rationale for using the BRI standard. In other words, if BRI is the rule, perhaps its use warrants a closer look at whether some "further examination" is appropriate when BRI is in effect.

To date, the USPTO's revision proposals regarding motions to amend have relied on attempts to clarify the motion to amend procedure, as it has done in Idle Free System Inc, v. Bergstrom Inc., Case IPR2012-00027 (Paper 26), and more recently in MasterImage 3D Inc. v. RealD Inc., Case IPR2015-00040 (Paper 42).

The office has stated that is does not contemplate seeking assistance from the Examiner Corps for review of motions to amend, likely out of concern for the oft-cited efficiency of PTAB trials, and also has not adopted suggestions that a denied motion to amend be converted into an ex parte examination, as the standards applied in each are different. However, these ideas may warrant further consideration and comment. It seems that a revised procedure including "further examination" of the claims per the proposed amendments would better align the procedure with other procedures applying the BRI construction standard.

In practice, the USPTO has a perfect record of having kept cases below its one-year mandate, with the current average resting nearer 11 months, and without ever using the six-month "good cause" extension. Could the current extra month, or the six-month extension, be used for cases in which some further examination is warranted? In addition, several existing USPTO procedures are known for expediting regular office examination, and in fact have been effective in so doing. Perhaps one of these procedures could provide a hint as to how to allow for additional examination during PTAB trials, while not sacrificing the efficiency of the process.

The office should look to these options and others for a way to bring into harmony the use of BRI as the claim construction standard in PTAB trials on the one hand, and the more limited availability of the patent owner to amend claims on the other, and further comments regarding these topics may lead to additional ideas on how to effect such harmonization.

Public comment on the proposed rules is available until Oct. 19, via email at PTABTrialPilot@uspto.gov​.​​

Originally published in the Daily Journal on September 2, 2015. ​