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Director's Forum: A Blog from USPTO's Leadership

Tuesday Jun 19, 2012

Ensuring Quality Inter Partes and Post Grant Reviews

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

In pursuing our mission to ensure the highest possible level of patent quality, the USPTO has for decades employed the BRI standard—broadest reasonable claim interpretation—to construe claims before the Office. Using this standard, we give patent claims in front of the USPTO their broadest reasonable interpretation. This approach has for decades been uncontroversial, because it represents good policy and strikes a fair balance. It ensures that the public can clearly understand the outer limits applicants and patentees will attribute to their claims. And since applicants and patentees have the opportunity to amend their claims when working with the USPTO, they are able to resolve ambiguities and overbreadth through this interpretive approach, producing clear and defensible patents at the lowest cost point in the system.

Recently it has been suggested that the Office use the district court’s higher standard, construing claims more narrowly so as to preserve their validity in implementing the new America Invents Act (AIA) inter partes and post grant review proceedings. Unfortunately, this change would not be workable or appropriate. Employing a district court approach to claim construction in the new proceedings would impair the efficient operation of the Office and result in facially inconsistent results, as well as constitute bad policy for our country’s IP system.

As alluded to above, patent claims serve an important public notice function. An essential purpose of the broadest reasonable claim interpretation standard in the amendment process is to encourage an inventor to fashion clear, unambiguous claims. Patent owners in inter partes and post grant reviews will be afforded opportunities to amend their claims commensurate with their contribution to the art. Only through the use of the broadest reasonable claim interpretation standard can the Office ensure that uncertainties of claim scope are removed by the inventor. In contrast, patents before a district court are presumed valid with a heightened “clear and convincing” standard of proof to demonstrate invalidity. Consistent with this heightened presumption of validity—and as there is no opportunity to amend and resolve ambiguities—district courts construe claims to uphold validity. The Office however, is not so limited in its approach to claim interpretation, given its authority to amend patent claims.

Some have expressed a concern that applying the broadest reasonable interpretation standard to inter partes and post grant reviews could lead to double standards between ongoing patent litigation and the Office’s reviews. The AIA however, addresses this concern. Specifically, the AIA imposes limitations on a petitioner’s ability to file a review when there is ongoing district court litigation, while providing time limits for the Office to complete its reviews. By placing limits on the filing and completion of the reviews, and encouraging coordination between the Office and district courts, the AIA provides improved mechanisms to avoid conflicts. 

On the other hand, inconsistent results would become a major issue if the Office adopted a standard of claim construction other than the broadest reasonable interpretation for post-grant reviews. Specifically, the AIA contemplates that there will be multiple proceedings in the Office, and thus requires the Office to establish rules concerning the relationships between the various proceedings. For example, there may be an inter partes review of a patent that is also subject to an ex parte reexamination, where the patent is part of a family of co-pending applications all employing the same claim terminology. Major difficulties would arise where the Office is handling multiple proceedings with different claim construction standards applicable. In this world, the same amendment made in an inter partes review and a pending application could result in an allowance in one case and a rejection in the other. Or, the introduction of narrower language in a pending application and broader language in an inter partes review could result in an allowance of the broader language and a rejection of the narrower language. Clearly, these examples and many others would produce bizarre results, unhelpful to patentees, applicants, the public, and the system.

To avoid the potential of having distinct alternative claim constructions for a claim term arising in the various proceedings before the Office and the inconsistent results flowing therefrom, the Office has chosen to continue to employ a single standard, the broadest reasonable interpretation standard, for proceedings before the Office. Continued use of the broadest reasonable claim interpretation will ensure the Office serves the patent community and makes full use of its resources in processing patent claims efficiently, effectively and consistently.

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