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Articles

How Patent Reform Could Affect Claim Construction in IPR

May 21, 2015

Articles

How Patent Reform Could Affect Claim Construction in IPR

May 21, 2015

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This article appeared on Law360 on May 21, 2015 and reprinted with permission.

How should patent claims be construed in postgrant proceedings at the patent office? The U.S. Patent and Trademark Office currently gives claims in unexpired patents their “broadest reasonable construction” in all postgrant proceedings, as it does during ordinary examination. The Federal Circuit recently approved this approach, finding it both consistent with congressional intent in enacting the 2011 America Invents Act and, in any event, within the PTO’s discretion to adopt. See In re Cuozzo Speed Techs. LLC, 778 F.3d 1271, 127982 (Fed. Cir. 2015).

But some in Congress have a different view. A patent reform bill called the Innovation Act was introduced in the House of Representatives in February 2015 that would require the patent office to construe each claim as it “would be in a civil action” and to “consider” any prior construction from “a civil action in which the patent owner was a party.” Likewise, a Senate bill introduced by Sen. Chris Coons, D-Del., in March 2015 called the Support Patents and Research for Our Nation’s Growth (STRONG) Patents Act of 2015 contains the same provisions. Yet not everyone espouses this view. Another bill — the Protecting American Talent and Entrepreneurship (PATENT) Act of 2015 — introduced by Senate Judiciary Committee Chairman Charles Grassley, R-Iowa, and others in April 2015 does not include such a provision among its proposed changes to the patent system.

Given these competing proposals, it is worth examining the “broadest reasonable construction” standard and whether it should be retained.

Read the rest of “How Patent Reform Could Affect Claim Construction in IRP” here.

If you have any questions about this article or would like to discuss the topic further, please contact the authors, Craig Countryman and Michael Rosen.

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