On May 8, 2018, the United States Patent and Trademark Office (USPTO) announced a proposed rulemaking to change the current claim construction standard used in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) proceedings before the Patent Trial and Appeal Board (PTAB). If approved, this change would align the standard applied in claim construction proceedings in the PTAB with the standard applied in District Courts and the International Trade Commission (ITC). Currently, the PTAB interprets patent claims according to their broadest reasonable interpretation, while District Courts and the ITC apply the ordinary and customary meaning standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). This proposed rule would change the claim construction standard applied in all pending IPR, PGR, and CBM proceedings, and not just newly-filed petitions.The USPTO also proposed an amendment to the rules that would require the PTAB to consider any prior district court or ITC claim construction determination. In addition, the USPTO clarified that under the proposed rule, the prosecution history (part of the intrinsic evidence considered by Phillips and its progeny) would include previous IPR, PGR, and CBM proceedings.

The USPTO—relying on data and comments it collected—expressed that the purpose of the proposed rulemaking included ensuring consistency and predictability in claim constructions across multiple proceedings, as well as increasing judicial efficiency.

The USPTO’s announcement can be found here. The proposed rulemaking was published in the Federal Register on May 9, 2018, and can be found here [PDF]. Comments can be submitted to ptabnpr2018@uspto.gov or via http://www.regulations.gov, no later than July 9, 2018, to be considered.