The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard applied in federal courts and ITC proceedings that follow Phillips v. AWH Corp., 415 f .3d 1303 (Fed. Cir. 2005) (en banc). The proposed rule also requires the PTAB to consider prior claim construction determinations that are timely made of record from a civil action or ITC proceeding.

The differences between the current and proposed rule for IPRs are shown below:

Similar amendments are proposed to 37 C.F.R. § 42.200(b) for post-grant review proceedings and 35 C.F.R. § 42.300(b) for covered business method review proceedings.

The USPTO indicated that this change in claim construction standard would be applied to all pending IPR, PGR, and CBM proceedings before the PTAB.

The deadline to submit written comments on the proposed rulemaking is July 9, 2018.

The Notice is available at https://www.gpo.gov/fdsys/pkg/FR-2018-05-09/pdf/2018-09821.pdf.

Written by: Nathanael Luman, Ph.D. and Kerry S. Taylor, Ph.D.