The US Patent and Trademark Office (USPTO) recently proposed to apply a different claim construction standard in post-grant review proceedings (i.e., IPRs, PGRs, and CBMs) before the Patent Trial and Appeal Board. The USPTO now upholds patents in post-grant review proceedings only if the patent is novel and nonobvious over the prior art when disputed claim terms are given their “broadest reasonable interpretation” (BRI).
Under the new proposal, the USPTO would apply the Phillips standard now used in patent litigation to interpret patent claims in post-grant review proceedings. The USPTO admits that the proposed application of the Phillips standard, as opposed to the BRI standard, is likely to result in more patents surviving post-grant review proceedings. And the USPTO further proposes to construe claims to preserve their validity. If it goes into effect after the mandatory comment period, as normally happens, the USPTO’s proposal would strengthen patent rights.