PTAB changing claim construction standard for interpreting claims in IPR proceedings

Posted Friday, Oct 19, 2018 by Jonathan Wells

Last week, the United Sates Patent and Trademark Office (USPTO) announced they will be replacing the claim construction standard applied during inter partes review (IPR) and other proceedings before the Patent Trial and Appeal Board (PTAB).  Up until now, in a PTAB proceeding, claims of an unexpired patent have been given their “broadest reasonable construction” in light of the specification of the patent in which they appear.  From November 13th, this will change to the same “Phillips” standard used to construe a claim in a civil action.  Phillips allows claim terms to be further construed beyond the patent’s specification, to use the prosecution history and other documents in the file wrapper, plus extrinsic evidence such as scholarly papers, dictionaries and expert testimony.

The USPTO announcement is here.

 


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