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USPTO Seeks to Change BRI Patent Claim Construction Standard

The United States Patent Trademark Office announced on May 8 that it proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patents with the same standard used in Federal district courts and the International Trade Commission (“ITC”).  Under the proposed approach, the Office would apply the principles that the Federal Circuit articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny.

As held in Phillips, the “words of a claim are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at at 1212−1313. The Phillips standard would be applied in all AIA challenges and would take into account the claim language itself, specification, and prosecution history pertaining to the patent.

The Office proposes to amend Rules 42.100, 42.200, and 42.300 as follows: a claim of a patent, or a claim proposed in a motion to amend, “shall be construed using the same claim construction standard that would be used to construe such claim in a civil action to invalidate a patent under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 

The Office has requested input from the public within 60 days on the proposed rule changes and on how the Office should implement the changes if adopted. To provide comments, please email the Office at

© Polsinelli PC, Polsinelli LLP in CaliforniaNational Law Review, Volume VIII, Number 137


About this Author

Ryan Murphy, Polsinelli Law Firm, Washington DC, Intellectual Property and Litigation Attorney
Of Counsel

Ryan Murphy partners with clients to understand their business and individual roles within an industry in order to obtain positive outcomes on their behalf. Much of Ryan’s practice involves advanced electrical, software, and communications devices and systems, medical devices, pharmaceutical compounds and mechanical devices. Exemplary technologies include mechanical and polymer attachment mechanisms, cellular telephony and applications, drug compounds, catheter sheaths, spinal implements, and wireless communication protocols.

Ryan’s experience...

Suni Sukduang, Polsinelli Law Firm, Houston, Intellectual Property and Litigation Attorney

Suni Sukduang, Chair of the Post Grant Practice Group, uses his legal and technical knowledge to advise some of the world’s most innovative companies on ways to leverage and protect their intellectual property. 

Suni’s practice involves a broad spectrum of IP law, including advising clients in post-grant proceedings matters related to patents involved in multiparty litigations. Suni has been involved in more than 100 litigation-driven post grant matters including inter partes reviews, covered business method reviews and reexamination proceedings and leverages this practice to provide litigation support in matters before U.S. federal courts and the ITC.

Additionally, Suni advises companies on IP strategy, development, and monetization. He collaborates with in-house counsel, business executives, and key stakeholders to develop and execute programs to foster innovation, understand competitive landscapes, and how intellectual property can be leveraged to increase shareholder value.    

Suni also advises the venture investment community and early stage companies on a wide range of topics including corporate and IP strategy, due-diligence, and competitive intelligence.