Less than two months after Andrei Iancu was confirmed as the new Director of the USPTO, the Office issued a Notice of Proposed Rulemaking concerning the claim construction standards employed in contested USPTO proceedings, including IRPs, PGRs, and CBMs.  The proposed change would abandon the broadest reasonable construction standard currently used for unexpired patents in favor of the same approach used by federal courts under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  The proposed rule would instruct the PTAB to consider any claim construction rulings in federal court or ITC proceedings that are “timely made of record.”  The stated rationales for the proposed change include improved judicial efficiency and harmonization of the federal court and USPTO constructions, as patents subjected to contested PTO proceedings are often concurrently litigated in federal courts. The USPTO intends for the new standard to be applied in all matters that are pending when the final rule is passed.

Public comments will be accepted for 60 days following the official publication of the proposed rule, which is expected to be published May 9, 2018.  The preferred method for offering comments is by email to PTABNPR2018@uspto.gov.  All comments submitted directly to the USPTO or provided on the Federal eRulemaking Portal should include the docket number (PTO-P-2018-0036).

The change in construction standards will not have a significant impact in all contested PTO proceedings, but it should make it more difficult to invalidate some claims, as narrower constructions will read on less prior art.