The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts and the International Trade Commission (ITC). The Office also proposes to amend the rules “to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an [AIA trial] proceeding.” Any proposed changes adopted in a final rule would be applied retroactively to pending AIA trials.

The Supreme Court, in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016), endorsed the Office’s ability to use its rulemaking authority to choose a claim construction standard. With five years of data and experience—including some evidence that more than 85% of patents at issue in AIA trial proceedings also are subject to federal court proceedings—the Office has concluded that a change in the claim construction standard is prudent and that using the same standard across various forums “could help increase judicial efficiency overall.” The notice further explains that “having the same claim construction standard for both the original patent claims and proposed claims [(i.e., claims proposed in a motion to amend)] would reduce the potential for inconsistency in the interpretation of the same or similar claim terms.”

The Office’s notice published in the May 9, 2018, Federal Register. The text of the proposed rules can be found here. The Office solicits comments by July 9, 2018.