The USPTO announced today proposed rulemaking for changing its policy related to claim interpretation in Patent Trial and Appeal Board (“PTAB”) proceedings (not including patent examination). Currently, the broadest reasonable interpretation (“BRI”) standard is applied when analyzing claims. The proposed new rules would result in “the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings;” i.e., “ordinary and customary meaning” according to “a person of ordinary skill in the art in question at the time of the invention,”[1] and “reasonable certainty” for definiteness analysis[2]. In addition, it is proposed that the USPTO/PTAB “will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding.”
The Notice of Proposed Rulemaking is scheduled to publish tomorrow, May 9, 2018. The comment period is scheduled to end 60 days from publication—July 8, 2018. The unpublished Proposed Rule can be found here.
It appears that the USPTO and the PTAB are reacting to recent Supreme Court decisions, e.g., Oil States and SAS (See our summary of these cases here). Or perhaps, this is the next step in USPTO Director Andrei Iancu’s pledge to “provide reliable, predictable and high quality IP rights.” In any case, it is clear that there are still many changes coming to post grant proceedings before the USPTO.
BioLoquitur will continue to monitor these developments and will keep you informed of changes.
[1] Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
[2] See, Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).