The USPTO has published a proposal today to change the way claims in unexpired patents are interpreted in AIA post-grant validity challenges (including IPR, PGR, CBMR) in the Patent Trial and Appeal Board (PTAB). Currently, claim terms are given their “broadest reasonable interpretation” consistent with the patent specification (“BRI standard”). The USPTO proposes to use the same claim interpretation approach used in U.S. federal district courts, construing claim terms in view of the claim language itself, the patent specification, and any relevant portions of the USPTO prosecution history (known as the “Phillips” approach). In any post-grant validity challenge where a narrower claim scope results from use of the Phillips approach rather than the BRI standard, the challenge will be more difficult and the likelihood of success will be correspondingly lower.  This rule change will be welcomed by patent owners, but not by patent challengers.

Comments on the proposal will be accepted for the coming 60 days, meaning the earliest possible date the new rule could take effect is 8 August 2018, although it could occur weeks or even months later.  In order to be prepared for the rule change, Osha Liang recommends that any post-grant challenges currently being considered should be filed as far in advance of 8 August as is possible.  We expect (but cannot guarantee) that the new rule will not be applied retroactively to patent challengers who filed post-grant validity challenges in reliance on PTAB’s use of the BRI standard required by the regulations in force and effective at the time of filing of any petition for IPR, PGR, or CBMR.

The proposal may be viewed in the Federal Register here.

A detailed article about this will appear in Osha Liang’s June 2018 Newsletter.

For more information, please contact the professional(s) listed below, or your regular Osha Liang contact.

Jonathan P. Osha
Managing Partner
Email: osha@oshaliang.com

Peter C. Schechter
Litigation Partner
Email: schechter@oshaliang.com