On May 9th, the USPTO released a short “Notice of proposed rulemaking” entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.” In brief the Notice proposes to replace the broadest reasonable interpretation standard for construing unexpired patent claims that is used by the PTAB in IPR, post-grant review and the transitional program for covered business method patents, with the Phillips Standard used by the district courts. This standard requires that the claims are given “the meaning that [a] term would have to a person of ordinary skill in the art at the time of the invention.” The courts give primary weight to intrinsic evidence – the specification, and the prosecution history—but can consult extrinsic evidence such as technical treatises and even expert testimony, if needed. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The Federal Circuit has been using the BRI standard to decide appeals from PTO proceedings, but uses the Phillips standard for appeals from the district courts. Continue reading
Warren D. Woessner
PTO Releases Revised Guidance on Compliance with Mayo/Alice Rule
At virtually the same time, Director Iancu released a Request for Comments on Determining Whether a claim element is [WRC] for the Purposes of Subject Matter Eligibility, and it pretty much repeats the factors listed in the Bahr Memorandum. For a detailed summary of the factual underpinnings that an examiner must make in order to support a rejection on the basis that a claim directed to a PAIN does not meet the inventive concept requirement because it is WRC, please refer to my post of April 20th. Continue reading →