USPTO Proposes Amendments to Rules for Inter Partes Review

Kelly Davio

The United States Patent and Trademark Office (USPTO), in a proposed rule published today on the Federal Register, seeks to amend the rules for inter partes review proceedings, and similar proceedings, before the Patent Trial and Appeal Board.

The United States Patent and Trademark Office (USPTO), in a proposed rule published today on the Federal Register, seeks to amend the rules for inter partes review (IPR) proceedings, and similar proceedings, before the Patent Trial and Appeal Board (PTAB).

The proposed rule would replace the current standard for construing unexpired patent claims and replace it with the same standard that is applied in federal district court and International Trade Commission proceedings.

The current standard uses the broadest reasonable interpretation (BRI), which determines the scope of claims in patent applications not only on the basis of the claims’ language, but also on giving claims their broadest reasonable construction as they would be interpreted by a person of ordinary skill in the art. (The broadest reasonable interpretation, the USPTO points out, is not synonymous with the broadest possible interpretation, however.)

In federal court proceedings, by contrast, claims are not given the broadest reasonable interpretation in proceedings that involve patent infringement and can be interpreted based on a prosecution record.

USPTO says that it intends that the proposed rule’s changes, if and when adopted in a final rule, will be applied to pending IPR proceedings before the PTAB.

USPTO is “Using over [5] years of historical data and user experiences to further shape and improve PTAB trial proceedings,” reads the proposed rule, and “Some parties have expressed a desire that the [USPTO] apply the same claim construction standard used in federal district courts, rather than the current standard of BRI.”

IPRs are frequently used by biosimilar developers to challenge claims of patents covering biologic drugs, and according to Christopher Bruno, an associate in the Intellectual Property group at Schiff Hardin LLP, “The Patent Office’s proposed elimination of a separate claim construction standard from the district courts will likely have little impact on IPR outcomes, including those in biologics cases.” Instead, said Bruno in an email to The Center for Biosimilars®, “The proposed rule reflects the existing trend of emphasizing that BRI was not the broadest possible meaning.”

The proposed rule comes after the USPTO held a “listening tour” in 2014 to solicit feedback on how to make these trial proceedings more transparent and effective. Also in 2014, the office published a request for comments in the Federal Register.

USPTO seeks feedback on the proposed rule, and will receive comments until July 9, 2018.