On October 11, 2018, the United States Patent and Trademark Office (USPTO) announced a change in the claim construction standard used for inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) review. For these proceedings, the claim construction standard will be changed from the broadest reasonable interpretation (BRI) standard to the standard used in federal district courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and its progeny. Additionally, the USPTO will now consider any prior claim construction determinations from corresponding civil actions, or proceedings before the International Trade Commission (ITC), that are timely made of record in an IPR, PGR, or CBM.

The new standard will be in effect for all petitions filed on or after November 13, 2018. The change will not apply to existing IPR, PGR, and CBM proceedings or ex parte prosecution.

The USPTO states that the change in standard will “lead to greater uniformity and predictability” between judicial forums, and increase efficiencies for both the USPTO and the parties. This rule change comes after several months of comments from the public following a notice of proposal in May 2018, previously described on our blog, of which “[t]he majority of the comments were supportive of changing the claim construction standard along the lines set forth in the proposed rule.”

Considering that this new standard will be in effect for all petitions filed on or after November 13, 2018, there is a narrow window, now open, within which to file a petition seeking review of claims that will be interpreted under the current BRI standard. While applying the BRI standard, as compared with the Phillips standard, may have little, if any, effect in some cases, it is, at least for the next month, an important consideration.

Another strategic consideration to assess until the effective date of the change is whether filing a petition before the effective date could be beneficial in connection with a parallel district court action because there would not be a record created at the USPTO of claim construction under the Phillips standard. That is, it may provide some flexibility, if the claim construction from the PTAB is not in your favor, to argue differently in the district court action based on the different standard applied by the PTAB.

A summary from the USPTO regarding the rules change is available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/procedures/ptab-issues-claim-construction.

The full text of the new rule is available at https://www.federalregister.gov/documents/2018/10/11/2018-22006/changes-to-the-claim-construction-standard-for-interpreting-claims-in-trial-proceedings-before-the.