Big changes to patent inter partes review in the horizon
Last week, the United States Patent and Trademark Office announced a final rule revising the claim construction standard for interpreting claims in inter partes review, or IPR, post-grant review and covered business method patent proceedings before the Patent Trial and Review Board. The final rule, abandoning the broadest reasonable interpretation standard in favor of the same standard used by federal courts and known as the Philips standard, goes into effect on Nov. 13.
The USPTO summary explains “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, that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.”
What this means for you:
- Harmonization: This rule change will harmonize the legal standards between the USPTO at the IPR level and federal courts. This means that previous claim construction rulings by, for example, a federal court will be given greater emphasis by the USPTO since the same standard is being used. This is also likely true going the other way – federal courts can give greater weight to USPTO IPR rulings regarding claim construction based on the use of the same standard.
- File IPR Petitions Before November 13, If Possible: Anyone planning an IPR petition before the PTAB should file before the Nov. 13 change goes into effect to utilize the current broadest reasonable interpretation standard.
- Patent Application Standard Does Not Change: This change only applies to issued patents challenged at the IPR level. Thus, the USPTO will continue to use the broadest reasonable standard in examining pending patent applications.
- A Decrease in IPR Petitions?: Theoretically, this change in legal standard could make it more difficult for a petitioner to challenge patentability before the USPTO. That said, the overall burden of proof before the USPTO is still lower than the higher clear and convincing evidentiary standard before the federal court. Thus, while there could be fewer IPR petitions than what we have seen the past few years, it is unlikely that this ruling will have a significant impact on decreasing the number of overall filings.