On October 3, the Office of Information and Regulatory Affairs (OIRA) completed its review of the US Patent and Trademark Office’s (USPTO) proposed new rule regarding changing the claim construction standard applied in certain proceedings before the Patent Trials and Appeal Board (PTAB)—specifically, in inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) proceedings. The completion of OIRA’s review sets the stage for the USPTO to issue a final rule on claim construction. Consistent with prior practice, the USPTO will likely issue its formal response to comments on the proposed rule as part of the final rules package. The final rules package will set a date for the rule to take effect, usually 30–60 days from publication in the Federal Register.

The USPTO first published its notice of proposed rulemaking on May 9, 2018. See 83 Fed. Reg. 21,221 (May 9, 2018). The proposed rule would replace the PTAB’s current claim construction standard for unexpired patents—known as the broadest reasonable interpretation (BRI) standard—with the standard already applied by federal district courts and the International Trade Commission (ITC)—often referred to as the “Phillips” standard, after the seminal Federal Circuit decision, Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim terms are given “the meaning that the term would have to a person of ordinary skill in the art at the time of the invention”). Additionally, the proposed rule would require the PTAB to take into consideration any existing claim construction determinations for a given claim term made in a prior civil action or ITC proceeding. The changes in the proposed rule would apply only to IPR, PGR and CBM proceedings and would not alter the USPTO’s application of the BRI standard during the prosecution of pending patent claims.

The USPTO solicited public comments on its proposed rulemaking until July 9, 2018. On October 3, 2018, OIRA formally completed its review of the received public comments and stated its “Concluded Action” on the proposed rulemaking was “Consistent with Change.” Until the USPTO issues its response addressing the public feedback, it remains unclear what the exact change to the rule will be. However, it is expected that the USPTO will enact the rule requiring the PTAB to interpret unexpired claim terms according to the Phillips standard, as opposed to the BRI standard. A potential change to the proposed rule could be the removal of the additional requirement that the PTAB consider previous claim construction determinations from other tribunals.

The USPTO is expected to issue a response within the next week. WilmerHale will continue to monitor the status of this proposed rulemaking as more information becomes available.