Change in Claim Construction at PTAB May Not Have a Big Practical Impact but Its Message Is Clear

The United States Patent and Trademark Office (PTO) recently announced its intention to change the claim construction standards in post-issuance procedures. The change would follow the Phillips standard and bring the PTAB in line with  Article III courts and the International Trade Commission (ITC). Intellectual Asset Management contacted Finnegan attorney Cory Bell for his thoughts on the proposed change.

Cory said, "The proposed rule indicates that the Board intends to have the rule apply to all pending IPR, PGR, and CBM proceedings before the PTAB. Accordingly, we could potentially see the PTO implement the rule change in a similar way to how it implemented the SAS guidance which creates the potential for additional briefing and discovery, as well as extensions."