The Patent and Trademark Office on October 10, 2018, published a final rule changing the claim construction standard applied during inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB). The final rule replaces the "broadest reasonable interpretation" standard with the federal court claim construction standard, also known as the Phillips standard, that is used to construe a claim in a civil action under 35 U.S.C. § 282(b). Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

According to the PTAB, the rule change will "lead to greater consistency and harmonization with the federal courts and the ITC and lead to greater certainty and predictability in the patent system." Also, consistent with AIPLA's recommendations, the PTAB may consider any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR, or CBM. The final rule will not be retroactively applied and instead will apply only to IPR, PGR, and CBM petitions filed on or after the effective date of the final rule, which is Nov. 13, 2018. 

In response to the proposed rule published last May, AIPLA supported applying the Phillips standard in AIA trial proceedings, while recommending that the PTAB try to adhere to prior claim construction determinations made by district courts or the International Trade Commission, if such prior constructions are timely made of record in AIA trial proceedings. 

In a comment letter, AIPLA stated the following:

The BRI standard, adopted in the 1920s, was justified by the ability of patent applicants to "freely" amend claims during prosecution.  Its use as a legal construct originated as part of the give and take between the applicant and the Patent Office to determine the scope of claims awardable to the applicant during the application stage, specifically because at that stage the scope of patentable rights is being negotiated.  Once the scope of claims has been negotiated and the application matures into a patent, the terms of issued claims should be construed according to their ordinary and customary meaning as understood by one of ordinary skill in the art, unless the applicant acted as his or her own lexicographer or disclaimed scope of a claim during prosecution.  Construing issued patent claims using the Phillips standard leads to greater certainty in the scope of the claim, which can thereby encourage investment in the patented product, method or article of manufacture.          

The full text of the final rule is published in the Federal Register.

AIPLA's comment letter in response to the Notice of Proposed Rulemaking.