PTO Proposes Rulemaking to Implement Phillips Claim Construction at PTAB

By Gene Quinn
May 8, 2018

Andrei Iancu has been Director of the United States Patent and Trademark Office (USPTO) for just three months. He has been giving speeches raising the hopes of patent owners, even promising that the American patent system will not continue down the same path it has been on over the last several years. In his short time leading the nation’s innovation agency he has delivered hope, and the industry is already seeing results. The Berkheimer memo giving examiners guidance regarding patent eligibility was a welcome breath of fresh air. Today, however, is a first glimpse of what many have been waiting to see — action on the Patent Trial and Appeal Board (PTAB).

Earlier today the USPTO announced proposed rulemaking that would change the prior policy of using the Broadest Reasonable Interpretation (BRI) standard for construing unexpired and proposed amended patent claims in PTAB proceedings under the America Invents Act and instead would use the Phillips claim construction standard. The new standard proposed by the USPTO is the same as the standard applied in Article III federal courts and International Trade Commission (ITC) proceedings, a change critics of the PTAB process have urged for many years in order to bring uniformity to post grant challenges across forums.


“Having AIA trial proceedings use the same claim construction standard that is applied in federal district courts and ITC proceedings also addresses the concern that potential unfairness could result from using an arguably broader standard in AIA trial proceedings,” the NPRM says. “Under the proposed approach, the Office would construe patent claims and proposed claims based on the record of the IPR, PGR, or CBM proceeding, taking into account the claim language itself, specification, and prosecution history pertaining to the patent. The Office would apply the principles that the Federal Circuit articulated in Phillips and its progeny.”

The USPTO is also proposing to amend the rules for PTAB trials to add that the USPTO will consider any prior claim construction determination concerning a term of the claim in a civil action, or an ITC proceeding, that is timely made of record in an Inter Partes Review (IPR), Post Grant Review (PGR), or Covered Business Method (CBM) proceeding.

The purposes of the proposed rule include, among other things, are to ensure consistency in claim construction between the PTAB and proceedings in district court or at the ITC, and to increase judicial efficiency. “The Office’s goal is to implement a fair and balanced approach, providing greater predictability and certainty in the patent system,” the Notice of Proposed Rulemaking (NPRM) reads.

While there is much left to do in order to truly bring a fair and balanced approach to PTAB proceedings and to provide predictability and certainty in the U.S. patent system, today marks a very important first step. It would seem that Iancu’s words are not the typical political rhetoric one hears so frequently in Washington, DC. His words have meaning, and he seems interested in delivering. Hopefully, we will see more from the USPTO as he continues to familiarize himself with the inner workings of the Office, and particularly with the PTAB processes, but we turn the corner.

Certainly, it will be argued by those who support the PTAB that there is no difference, really, between BRI and Phillips, and perhaps they are right. Perhaps at the end of the day, there will be few cases decided by a change in the standard applied, but that doesn’t make the change any less significant. With this change, once the proposed rules become effective, the USPTO will be saying that issued patents, when reviewed at the USPTO, deserve the same respect as they receive in federal courts, and prior claim constructions issued by federal court judges and the ITC will be considered and not simply ignored. This alone brings a more balanced, sensible equilibrium to the system that was supposed to use post grant challenges as an alternative, not another bite at the apple using easier standards with Administrative Patent Judges biased in favor of invalidating issued patents.

The NPRM, which was signed by USPTO Director Andrei Iancu on May 3, 2018, will officially publish in the Federal Register on Wednesday, May 9, 2018. What was made available today is an advance copy of what will be published in the Federal Register, and is routine government practice.  Therefore, those wishing to submit comments should submit comments to ptabnpr2018@uspto.gov within 60 days from the official publication.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments. Join the discussion.

  1. Kevin R. May 8, 2018 12:32 pm

    Gene, does this mean it won’t be implemented for 60 days … figured I would ask before

  2. Joachim Martillo May 8, 2018 1:56 pm

    I have analyzed institution petitions, responses, and decisions.

    When I work on a patent application, nowadays I try to avoid anything on which the PTAB might hang a decision to institute. Once I do such work, there really isn’t much difference between BRI and Phillips claim construction.

    Post-grant review proceedings need a lot more than use of Phillips claim construction to create a level playing field in accord with the statutes.

    I will explain.

    The petitioner must prove unpatentability by preponderance of the evidence.

    That means that after institution the patent owner should create a prima facie case of patentability, and the petitioner must overcome it.

    Is there any guidance for such legal disputation?

    How about PGR? The following should be codified the PTAB rules.

    If the petitioner intends to argue indefiniteness of a claim, the petitioner should provide affidavits from a linguistics expert, an expert in the relevant epistemic jargon, and a expert in the art.

    If the petitioner fails to provide a necessary expert, the claim must be considered valid.

    If the petitioner intends to argue 101-ineligibility of a claim, the petitioner should provide (thanks to BERKHEIMER v. HP INC.) affidavits from an epistemologist, a linguistics expert, an expert in the relevant epistemic jargon, and a expert in the art.

    If the petitioner fails to provide a necessary expert, the claim must be considered valid.

  3. Valuationguy May 8, 2018 2:10 pm

    @2 Agree that this doesn’t level the playing field…but its a major step in the correct direction.

    I would CAUTION everyone however…..these proposed changes do NOTHING to help the EX PARTE RE-EXAMS which are currently in process. An ex parte re-exam isn’t considered to be a Post Grant Procedure (section 42.2) set up under the AIA (not would it fall under 42.1 IPRs or 42.3 CBMs) ….instead it is part of the Manual of Patent Examining Procedure (Chapter 2200). The proposed change does NOTHING to address the BRI standard continuing to be used in ex parte RE-EXAM.

    In light of this….I would recommend that as part of the comment period, all patent owners (and patent rights supporters) need to point out to Director Iancu and the PTO that leaving this loophole open (BRI used for re-exams) will just RE-SHIFT the preferred venue away from IPR back to Re-exam ….thus continuing the current boondoggle (letting the PTAB use BRI to cancel existing validly prosecuted and issued claims)….even if the initial petitioner (supposedly) can’t ACTIVELY participate in the prosecution of the reexam. [We all know this is an effectively untrue statement despite lip service that they can’t OFFICIALLY participate…since they will publicize info outside the proceedings where the PTO re-examiner can’t help but see it, bring it in (on its OWN recognizance) and use it….or the PTAB will just grab it as they have done many times in the past]. Thus, the comments/feedback should include a recommendation to extend these proposed changes to be effective for ex-parte RE-EXAMS….while leaving the BRI standard untouched for initial examinations.

  4. Anon May 8, 2018 3:21 pm

    Valuationguy @ 3,

    Do you have the same “concerns” vis a vis a granted patent as you do in the re-exam procedure?

    After all, are you not actually – in an examination mode – in that other procedure?

  5. Judge Rich's Ghost May 8, 2018 4:21 pm

    @Kevin R, to be more precise, the proposed rules won’t be implemented for AT LEAST 60 days. The comment period is open for 60 days. Then the PTO will have to review the comments. In response to the comments, the PTO could decide not to implement the rule change. Alternatively, the PTO could choose to modify the rule, which might, but not necessarily, require an additional comment period. Most likely, the PTO will issue the rule as proposed, and, when it does that, the PTO will also issue its response to the various comments. So . . . it will probably be at least 3-4 months before the rule is implemented.

  6. SoftwareForTheWin May 8, 2018 4:53 pm

    As I’ve said many times before – software patents the past 10 years are a farce and nothing but a liability once one issues. Small software entities are far better off to simply forgo patents and opt for the open source route instead. Sure you don’t get “patent protection” – but what has patent protection got you lately?!? At a minimum, open source does not $cost the small entity anything – whereas patents cost $20k to obtain and then multiplies of that to maintain.

    For software entities, it is a no-brainer to not bother with patents. There are better incentives elsewhere.

  7. Anon May 8, 2018 5:36 pm

    LOL, SFTW, your Big Corp thanks you for the easy pickings.

  8. SoftwareForTheWin May 8, 2018 8:36 pm

    Anon – newsflash: big corps will steal your unenforceable patents too – only at least open source didn’t $cost you anything AND you did not base your business model on relying on patents protection.

  9. Paul Cole May 9, 2018 5:07 am

    Obviously a welcome development.

    I always paraphrase the standard as “broadest most unreasonable interpretation.”

    How about correct and accurate interpretation. is that not what we should strive for at all stages in the application, due diligence and litigation processes?

  10. Anon May 9, 2018 8:18 am

    Mr. Cole @ 8,

    Your question here is an excellent one, and tied to the Office view of what BRI entails, and why – in the first instance – the Office admits to its use.

    That view is to FORCE an applicant to amend claims.

    Obstinately, this forced amendment view is for a desirous ends: clarity.

    At its core, the Office is purposefully NOT taking “the correct and accurate interpretation.” The admitted reason for this is tied directly to the fact that an applicant has the right to make amendments, and the view that amendments during examination WILL provide that clarity and WILL forestall later litigation (the kool-aid that ALL litigation “must be” bad.

  11. Pro Se May 9, 2018 10:01 am

    This is welcome news for patent owners reaching Markman in a trial and face the current issue of the PTAB and District Court both ignoring each other.

    BRI places a much broader interpretation on patent claims than Philips, and I’ve never seen a BRI interpretation use a dictionary for meaning.

    Philips has the benefit of using a dictionary for plain and ordinary meaning.

    For my personal issues, this is big and bright news.

  12. Sua Sponte May 9, 2018 11:18 am

    Pro Se @11–The Board has cited dictionary definitions in several BRI constructions. In one of my cases, the Board even sua sponte pulled its own dictionary definition and cited it in the final written decision!

  13. Vernon Wormer May 9, 2018 1:19 pm

    Has anyone seen the details and know whether the proposed rules would apply retroactively to patents that have been invalidated at the PTO but remain in force pending appeal at the CAFC?

  14. Eric Berend May 9, 2018 2:46 pm

    @ 6., 8., ‘SoftwareForTheWin’:

    As always in this forum, you act as if U.S. patents exist merely to constrain your so-sanctimonious ideas about “software freedom”. Technology as a topic, is not a mere canvas for your moral or economic superiority complex.

    Peddle your FOSS and SiliCON Valley IP pirate sycophantic tripe elsewhere. Everyone in the IP aware universe knows the issue focus and emphasis on *patents in general* at IPWatchdog.com. Do you really think such blatantly anti-patent and mostly false apologist nonsense can possibly gain any legitimacy; especially here?

  15. StrongPatents May 9, 2018 3:31 pm

    Does anyone care to weigh in on the effect this (change to Phillips) will have on IPR institution rates?

  16. Pro Se May 10, 2018 2:27 pm

    @12. Philips will establish ground for the initial respect for dictionary meanings when construing claims in the institution decision phase, not when the damage of institution is done, freezing a District Court litigation, for a “Ah-Ha” moment to happen in the PTAB trail when the APJs are not clear on terms within initial briefs.

    Philips will kill petitioners abuse of wildly broad BRI theories, stitching together 12 references because:

    The claim term “apple” under the 2 standards:

    Philips: Malus Pumila fruit species
    BRI: Any kind of fruit

    -Philips will give us the accuracy to stop overly broad interpretations that has been all too easy to invalidate seriously narrow and defined (what should be) strong patent claims.

  17. Pro Se May 10, 2018 2:29 pm

    Or even:

    *The claim term “apple” under the 2 standards:

    Philips: Malus Pumila fruit species
    BRI: Any kind of fruit or computer product

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