On October 10, 2018, the United States Patent and Trademark Office (USPTO) published a Final Rule in the Federal Register, changing the patent claim construction standard used by the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR), post-grant review (PGR), and covered business method (CBN) proceedings before the PTAB. For proceedings before the PTAB, the claim construction standard, or the standard for construing the meaning of the language used in patent claims was changed from the “broadest reasonable interpretation” (BRI) standard, to the standard currently used in federal district courts and the International Trade Commission (ITC), which follow the standard set forth in Phillips v. AWH Corp., 415 F3d 1303 (Fed Cir. 2005) (the Phillips Standard). This change in the claim construction standard took effect on November 13, 2018.
Why is the patent claim construction standard so important? The basic parts of a patent include a detailed written description or written specification of the invention, a set of drawings depicting the invention, and a set of claims. The claims are a written description of the invention that is protected by the patent. The claims are regarded as the most important part of the patent because they define the scope of protection of the invention provided by the patent. Because the claims define the scope of protection of the invention, the interpretation of the language of the claims is very important to know what does, and does not infringe the patent.
Prior to the rule change discussed above, the PTAB interpreted patent claims in IPR proceedings, PGR proceedings, and CBM proceedings using the BRI standard. What do all of these acronyms mean to the entrepreneur patentee, the small business patentee, or the individual patentee?
The PTAB is the Patent Trial and Appeal Board. The PTAB is an administrative law body that is a part of the United States Patent and Trademark Office. The PTAB decides issues of patentabilty, and in doing so interprets the meaning of the language used in patent claims.
An IPR is basically an inter partes review that is conducted in the PTAB. In an IPR, a party files a petition in the PTAB to invalidate claims of an issued patent as being anticipated or not novel, or obvious in view of the disclosures of prior issued patents or publications that predate the Patent Office filing date of the patent being reviewed.
A PGR is a post-grant review also conducted in the PTAB. A PGR is similar to an IPR in that a party can petition to invalidate the claims of an issued patent as being anticipated or obvious in view of prior issued patents or prior publications. However, in a PGR, a party can petition to invalidate the claims of a patent based on evidence of prior public use of the invention, evidence on prior sale of the invention and evidence of other public disclosures of the invention that predate the Patent Office filing date of the patent being reviewed.
A CBM is a covered business method proceeding also conducted in the PTAB. In a CBM, a party files a petition in the PTAB to invalidate the claims of a patent as being anticipated or obvious in view of prior patents or prior publications that predate the Patent Office filing date of the patent being reviewed. Additionally, a party can petition to invalidate the claims of a patent on any ground that is a condition for patentabilty of business method patents.
Thus, an IPR, a PGR and a CBM are all proceedings conducted in the PTAB that interpret patent claims and determine the validity of the claims of an issued patent.
Prior to the Final Rule changing the standard for interpreting claims in IPR, PGR and CBM proceedings before the PTAB, the PTAB construed patent claims using the BRI standard, or the “broadest reasonable interpretation” standard. Using the BRI standard, the PTAB determines the scope of the claims of a patent not solely on the basis of the language used in the claims, but also on giving the claims their broadest, reasonable interpretation in light of the written specification of the patent as the language would be interpreted by one of ordinary skill in the art.
Under the “Phillips” standard, the PTAB will interpret the language of patent claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history.” In IPR, PGR, and CBM proceedings, the PTAB, in interpreting claim language, will consider “the claim language itself, the specification, the prosecution history of the patent, and extrinsic evidence, among other things.”
In the Final Rule, the Patent Office stated that its goal in changing the patent claim construction standard was to implement a balanced approach, providing greater predictability and certainty in the patent system. Using the “Phillips” standard for interpreting the language of patent claims will result in a uniform standard for all claims under review in proceedings before the PTAB, in federal court litigations, and at the International Trade Commission. Applying the federal court claim construction “Phillips” standard in PTAB proceedings will lead to greater consistency with the federal courts and the International Trade Commission, and such consistency will lead to greater certainty as to the scope of issued patent claims, and will help achieve the goal of increasing judicial efficiency and eliminate arguments relating to different standards across different forums.
However, it should be noted that in the Final Rule, the “Phillips” claim construction standard for interpreting the language of claims will be used in federal court litigations, at the International Trade Commission, and IPR, PGR and CBM proceedings before the PTAB. In original patent prosecution examinations and re-examination proceedings conducted at the Patent Office, Patent Office Examiners will continue to use the broadest reasonable interpretation (BRI) standard of claim language interpretation.
It has been my experience in over thirty years of patent application preparation and prosecution, that at times a Patent Office Examiner’s use of the broadest reasonable interpretation (BRI) standard of claim language interpretation has resulted in a very broad interpretation of the claim language, and not a very reasonable interpretation of the claim language. Not using the “Phillips” claim construction standard in original patent prosecution examinations and re-examination proceedings conducted at the Patent Office seems counter to the goal of the Patent Office in the Final Rule, of implementing a balanced approach, providing greater predictability and certainty in the patent system as to the scope of issued patent claims.
It remains to be seen if future Patent Office rulemaking will adopt the “Phillips” standard of claim language interpretation in original patent prosecution examinations and re-examination proceedings conducted at the Patent Office.
On October 10, 2018, the United States Patent and Trademark Office (USPTO) published a Final Rule in the Federal Register, changing the patent claim construction standard used by the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR), post-grant review (PGR), and covered business method (CBN) proceedings before the PTAB. For proceedings before the PTAB, the claim construction standard, or the standard for construing the meaning of the language used in patent claims was changed from the “broadest reasonable interpretation” (BRI) standard, to the standard currently used in federal district courts and the International Trade Commission (ITC), which follow the standard set forth in Phillips v. AWH Corp., 415 F3d 1303 (Fed Cir. 2005) (the Phillips Standard). This change in the claim construction standard took effect on November 13, 2018.
Why is the patent claim construction standard so important? The basic parts of a patent include a detailed written description or written specification of the invention, a set of drawings depicting the invention, and a set of claims. The claims are a written description of the invention that is protected by the patent. The claims are regarded as the most important part of the patent because they define the scope of protection of the invention provided by the patent. Because the claims define the scope of protection of the invention, the interpretation of the language of the claims is very important to know what does, and does not infringe the patent.
Prior to the rule change discussed above, the PTAB interpreted patent claims in IPR proceedings, PGR proceedings, and CBM proceedings using the BRI standard. What do all of these acronyms mean to the entrepreneur patentee, the small business patentee, or the individual patentee?
The PTAB is the Patent Trial and Appeal Board. The PTAB is an administrative law body that is a part of the United States Patent and Trademark Office. The PTAB decides issues of patentabilty, and in doing so interprets the meaning of the language used in patent claims.
An IPR is basically an inter partes review that is conducted in the PTAB. In an IPR, a party files a petition in the PTAB to invalidate claims of an issued patent as being anticipated or not novel, or obvious in view of the disclosures of prior issued patents or publications that predate the Patent Office filing date of the patent being reviewed.
A PGR is a post-grant review also conducted in the PTAB. A PGR is similar to an IPR in that a party can petition to invalidate the claims of an issued patent as being anticipated or obvious in view of prior issued patents or prior publications. However, in a PGR, a party can petition to invalidate the claims of a patent based on evidence of prior public use of the invention, evidence on prior sale of the invention and evidence of other public disclosures of the invention that predate the Patent Office filing date of the patent being reviewed.
A CBM is a covered business method proceeding also conducted in the PTAB. In a CBM, a party files a petition in the PTAB to invalidate the claims of a patent as being anticipated or obvious in view of prior patents or prior publications that predate the Patent Office filing date of the patent being reviewed. Additionally, a party can petition to invalidate the claims of a patent on any ground that is a condition for patentabilty of business method patents.
Thus, an IPR, a PGR and a CBM are all proceedings conducted in the PTAB that interpret patent claims and determine the validity of the claims of an issued patent.
Prior to the Final Rule changing the standard for interpreting claims in IPR, PGR and CBM proceedings before the PTAB, the PTAB construed patent claims using the BRI standard, or the “broadest reasonable interpretation” standard. Using the BRI standard, the PTAB determines the scope of the claims of a patent not solely on the basis of the language used in the claims, but also on giving the claims their broadest, reasonable interpretation in light of the written specification of the patent as the language would be interpreted by one of ordinary skill in the art.
Under the “Phillips” standard, the PTAB will interpret the language of patent claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history.” In IPR, PGR, and CBM proceedings, the PTAB, in interpreting claim language, will consider “the claim language itself, the specification, the prosecution history of the patent, and extrinsic evidence, among other things.”
In the Final Rule, the Patent Office stated that its goal in changing the patent claim construction standard was to implement a balanced approach, providing greater predictability and certainty in the patent system. Using the “Phillips” standard for interpreting the language of patent claims will result in a uniform standard for all claims under review in proceedings before the PTAB, in federal court litigations, and at the International Trade Commission. Applying the federal court claim construction “Phillips” standard in PTAB proceedings will lead to greater consistency with the federal courts and the International Trade Commission, and such consistency will lead to greater certainty as to the scope of issued patent claims, and will help achieve the goal of increasing judicial efficiency and eliminate arguments relating to different standards across different forums.
However, it should be noted that in the Final Rule, the “Phillips” claim construction standard for interpreting the language of claims will be used in federal court litigations, at the International Trade Commission, and IPR, PGR and CBM proceedings before the PTAB. In original patent prosecution examinations and re-examination proceedings conducted at the Patent Office, Patent Office Examiners will continue to use the broadest reasonable interpretation (BRI) standard of claim language interpretation.
It has been my experience in over thirty years of patent application preparation and prosecution, that at times a Patent Office Examiner’s use of the broadest reasonable interpretation (BRI) standard of claim language interpretation has resulted in a very broad interpretation of the claim language, and not a very reasonable interpretation of the claim language. Not using the “Phillips” claim construction standard in original patent prosecution examinations and re-examination proceedings conducted at the Patent Office seems counter to the goal of the Patent Office in the Final Rule, of implementing a balanced approach, providing greater predictability and certainty in the patent system as to the scope of issued patent claims.
It remains to be seen if future Patent Office rulemaking will adopt the “Phillips” standard of claim language interpretation in original patent prosecution examinations and re-examination proceedings conducted at the Patent Office.
