PTO proposes abandoning “broadest reasonable interpretation” in IPRs, PGRs, and CBMs

By Deakin T. Lauer Published May 9, 2018

Yesterday, the PTO announced a notice of proposed rulemaking to change the claim construction standard used in AIA trial proceedings (IPRs, PGRs, and CBMs). The proposed change is from the “broadest reasonable interpretation” (the standard used during patent examination) to the claim construction standard that is used in federal court. The latter standard is already used in AIA trial proceedings involving expired or soon-expiring patents. If adopted, it would apply to all pending proceedings.

The current language of 37 C.F.R. § 42.100 and proposed changes are reflected below with the relevant language highlighted:


(b) A claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. A party may request a district court-type claim construction approach to be applied if a party certifies that the involved patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition. The request, accompanied by a party’s certification, must be made in the form of a motion under § 42.20, within 30 days from the filing of the petition.


(b) In an inter partes review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.121, 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. 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 the inter partes review proceeding will be considered.

The PTO’s stated reason for the rule change is to “ensure consistency in claim construction between the PTAB and proceedings in district court or at the ITC, and to increase judicial efficiency.”

Comments on the proposed rulemaking are due by July 9, 2018.