October 17, 2018

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USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review Post-Grant Review and Covered Business Method Patent Proceedings

The United States Patent and Trademark Office is publishing a final rule revising the claim construction standard used by the Patent Trial and Appeal Board (the “Board”) in inter partes review, post-grant review, and covered business method patent review proceedings.  The Board will no longer interpret claims under the broadest reasonable interpretation standard and will instead use the claim construction standard enunciated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny and followed by federal courts and the United States International Trade Commission (“ITC”).  The changes to the claim construction standard will only apply to proceedings in which a petition is filed on or after the effective date of the final rule.

Under the new claim construction rule, the Board will consider federal court and ITC claim constructions timely made of record.  While the Board is not bound by these prior claim constructions, they may find them informative for purposes of uniformity and predictability in the patent system.

A copy of the final rule scheduled to be published in the Federal Register on October 11, 2018 is available here.

Elizabeth Weiskopf contributed to this post.

Copyright 2018 K & L Gates

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About this Author

Jason A. Engel, Registered Patent Attorney, KL Gates, Law Firm
Partner

Jason A. Engel is a registered patent attorney with an undergraduate degree in electrical engineering. He concentrates his practice on the litigation of intellectual property matters with a focus on patent litigation and patent office litigation. He has substantial experience before the Patent Trial and Appeal Board, in federal district courts across the country, and with Section 337 investigations in the U.S. International Trade Commission.

Mr. Engel is experienced in all aspects of litigation, including discovery, motion practice, claim...

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