Question:

When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” apply?

Answer:

As shown in the supplement …

The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule (November 13, 2018).

* The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips, to construe patent claims and proposed substitute claims in AIA proceedings in which trial has not yet been instituted before the effective date of the final rule.

* The Office will continue to apply the BRI standard for construing unexpired patent claims and proposed substitute claims in AIA proceedings where a petition was filed before the effective date of the final rule.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

* In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.

* This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.

* The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.