PATENT LAW
New claim construction
The STRONG Act is in the wings but if it does not pass any time soon, patent owners can still pressure the USPTO to change its claim construction practice, as Eugene Perez of Birch, Stewart, Kolasch & Birch describes.
W
hile the rate of filings for a post- grant review (PGR) trial has been slow, the rate of petitions
filed to request an inter partes review (IPR) or a PGR specifically for a covered business method (CBM) patent trial have exceeded expectations. The rate of granting PGRs is around 70% for the fiscal year 2015, although it was higher in previous fiscal years. Once instituted, the petitioner has succeeded in cancelling patent claims in more than 70% of cases.
Many patent owners are now lobbying the US
Congress to change certain procedures in IPR, PGR and CBM. One of the changes concerns the claim construction applied by the US Patent and Trademark Offi ce’s (USPTO) Patent Trial and Appeal Board (PTAB)—the broadest reasonable interpretation (BRI) standard. A narrower claim construction may be in the works because the post-grant methodology used by district courts and the PTAB diff ers. T e BRI standard has been used for almost a decade for patent applications and is also
48 World Intellectual Property Review May/June 2015
used aſt er a patent is issued, such as in ex parte re-examinations. T e justifi cations behind BRI include: the applicant or patent owner has a chance to amend the claims and is in the best position to defi ne the invention; it eliminates ambiguity through claim amendments; and, unlike litigation, there is no presumption of validity before the USPTO. One tricky aspect of using BRI is that a
claim term can be construed broadly in view of the specifi cation, but the applicant or patent owner cannot import a limitation from the
www.worldipreview.com
in IPR and PGR
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100