In an effort to minimize the differences between AIA trials before the Patent Trial and Appeal Board (PTAB) and litigations in federal courts, to provide greater predictability and certainty, and to provide a more fair and balanced approach, the USPTO issued a Notice of Proposed Rulemaking on May 9, 2018.  The USPTO has proposed to change the claim construction standard for AIA trials (inter partes reviews (IPRs), post-grant reviews (PGRs), and the transitional program for covered business method patents (CBMs)) from the broadest reasonable interpretation (BRI) standard to the same standard applied in federal district courts and International Trade Commission (ITC) proceedings, namely an approach that follows the framework set forth in Phillips and its progeny (“the ordinary and customary meaning as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent”).  The proposed claim construction standard would apply to the construction of claim terms of both unexpired patent claims and claims proposed in a motion to amend.  (Presently, the Board applies the federal district court standard rather than the BRI standard only for claims of patents that will expire before entry of a final written decision).  The USPTO has also proposed to amend the rules to include a provision that the 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.

The USPTO is seeking public comments on the proposed rulemaking which must be submitted on or before July 9, 2018.

The USPTO intends that any proposed rule changes adopted in a final rule would be applied to all pending IPR, PGR, and CBM proceedings before PTAB.  However, the Office is also seeking input as to how any adopted changes should be implemented.

The proposed rules, if implemented, will result in narrower claim constructions which are more favorable to patent owners and less favorable to patent challengers.  Therefore, parties considering challenging patent claims in proceedings before the PTAB should attempt to file their cases as soon as possible, before any final rule is adopted, on the chance that the new rule(s) will not be applied retroactively.  It is possible, for example, that the USPTO could make the final rule retroactive in proceedings which have not yet received a claim construction from the PTAB, but not in proceedings in which claim constructions have been issued (and hence the parties have relied on the claim construction under the current BRI standard).  Arguably, it would be unfair and/or would result in delay for any change in claim construction standard to be applied to a proceeding in which the Board has already issued a claim construction.

The Notice of Proposed Rulemaking in the Federal Register can be accessed at




Precision Patent®

Notice of Proposed Rulemaking for AIA Trials Before the PTAB

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Fildes & Outland, P.C.