Boston Patent Law Association Response to USPTO Request for Comments on Notice of Proposed Rulemaking for Changes to PTAB Trial Claim Construction Standard

July 9, 2018

Jonathan B. Roses

Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice and Contested Matters Committees of a July 2018 Response to USPTO Request for Comments on proposed rulemaking for changes to USPTO PTAB trial claim construction standards. The Response expressed appreciation for the USPTO’s efforts to promote consistency between PTAB trial proceedings and litigation in the federal courts and at the International Trade Commission (ITC). While the Response did not oppose the proposal to replace the broadest reasonable interpretation standard with the Phillips claim construction standard, but suggested additional consideration to promulgation of rules governing the rollout of the change, guidelines on the consideration of prior claim construction determinations, and a bar on construction of claim terms that could not be raised in a PTAB trial proceeding.