The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (“AIA”). The change would replace the current Broadest Reasonable Interpretation (“BRI”) standard with the standard articulated in Phillips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  This change would harmonize the claim construction standard applied in inter partes review, post-grant review, and covered business method patent proceedings before the PTAB with the one used by federal district courts and the International Trade Commission.  The proposed amendment would also allow the PTAB to 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 AIA proceeding.

The current BRI standard used by PTAB differs from the Phillips standard used in federal district courts and the ITC. This can result in different constructions for the same or similar claim terms between federal district courts or the ITC, and PTAB panels in AIA post-grant proceedings.  Applying the same standard in all proceedings will improve uniformity, predictability, and overall judicial efficiency.  The USPTO’s proposed change also addresses concerns of potential unfairness resulting from using an arguably broader standard in AIA post-grant proceedings than is applied in federal courts or the ITC.

According to the Office, its “goal is to implement a fair and balanced approach, providing greater predictability and certainty in the patent system” and “[u]sing the same claim construction standard as the standard applied in federal district courts would seek out the correct construction—the construction that most accurately delineates the scope of the claim invention—under the framework laid out in Phillips.” (Citations and quotations omitted.)

Comments on the proposed rule changes can be submitted to the Office at PTABNPR2018@uspto.gov or http://www.regulations.gov within 60 days of the Publication Date in the Federal Register.