With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts.  Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB from the “broadest reasonable interpretation” or “BRI” to the “ordinary and customary meaning” standard applied by federal district courts, taking into consideration any prior claim construction determinations by the courts.

The proposal, available here, is open for comments through July 9, 2018.

The proposed change comes on the heels of the US Supreme Court’s April 24^thdecision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC et al., that inter partes review proceedings are a constitutional process for addressing a public right (albeit one that pertains to private rights).  See our prior post here.  The proposal is made despite – or perhaps in light of – the Supreme Court’s decision just two years ago, in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016), that the USPTO has authority to choose the standard it applies, and can use the traditional “broadest reasonable interpretation.”

The USPTO’s re-evaluation and proposed change in the standard that it uses addresses criticisms made in litigation and otherwise.  In particular, the proposal addresses criticisms that use of different claim construction standards by the PTAB and the courts creates confusion and inefficiencies.  Having different standards may be problematic because there is often a race between the courts and the PTAB to decide the validity of a patent’s claims, and an early decision by one or the other can preclude a later – and potentially different – decision by the other.  Having different standards provides an opportunity for strategy and argument, but at the cost of potentially unfair outcomes.

Whether there are differences in the validity determinations made by the PTAB and the courts because they use different standards is an open question.   As noted in our prior posting, here, there are instances where differences have resulted.  But in most cases, the fact that the standard applied by the PTAB and the courts is slightly different may have little or no impact on the ultimate validity decision.

Nonetheless, the USPTO’s proposal demonstrates a willingness to address public concerns and is expected to garner strong support.