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Patent Search & Analytics

Post-Grant Patent Review Standards Updated

Standardization is the key to efficiency, fairness, and regulation in areas from industry to education. Patent evaluation by the United States Patent and Trademark Office (USPTO) is no exception. Recently, changes have been finalized to allow common ground between the reviewing bodies of a challenged patent.

On October 10, 2018, the USPTO implemented a change to the post-grant patent review proceedings that pulls down the broadest reasonable interpretation (BRI) standard, used since the 2012 America Invents Act (AIA), to bring up the common use of the Phillips standard. Generally speaking, Phillips supports reviewers’ use of objective sources, such as dictionaries, to look at the ordinary meaning of claim terms in relation to specification, rather than relying on interpretation. The 2005 decision by the Court of Appeals for the Federal Circuit in Phillips v. AWH*, directs the use of the “ordinary and customary meaning of claim terms”, which should be informed by intrinsic evidence first, such as the patent application’s specification, then also informed by extrinsic evidence from secondary sources such as expert testimony, dictionaries, etc.

What prompted this change? The problem was occurring during patent prosecution: the standard that was applied for the meaning of terms within the claims (i.e., claim construction) was the broadest reasonable interpretation in view of the specification. For any limitations that are functionally claimed, the rules in 35 U.S.C. 112(f) are a statutory mandate for how the claim construction works. The Patent Trial and Appeals Board (PTAB at USPTO) used the BRI standard, and the same was applied during proceedings for inter-partes review (IPR) and post-grant review (PGR). This caused some inconsistent case results between the Federal Courts and ITC relative to the PTAB.

Now, applying Phillips during post-grant proceedings, the reviewing bodies operate under the same legal standard. This will apply to IPR, PGR, and Covered Business Method (CBM) petitions. Common process and understanding can prevent inconsistent results between the PTAB and Federal Courts. This maintenance of consistency supports regulation throughout the process, decreases opportunities for manipulation, and can reduce the likelihood that a patent can be infringed upon. It is also a standard that many might view as a means of promoting fairness post-grant, where the opportunities to amend claim language or clarify concepts are precluded or more limited.

As a result of this decision, effective per the final rule set for November 13, 2018, the PTAB will likely start incorporating more expert testimony, etc. in situations where the intrinsic evidence is debatable or unclear. Ultimately, the new standard of post-grant review will enable consistency between outcomes at the USPTO and Federal Courts, and provide greater stability to the patent process, promoting innovation and encouraging patent filings.

* Accessed 10/12/2018.