- Government officials are considering a rule change that would align the standards for inter partes review (IPR) and other legal proceedings handled by the Patent Trial and Appeal Board (PTAB) with those used in federal courts.
- The U.S. Patent and Trademark Office (PTO) is proposing a departure from the current standard — called the broadest reasonable interpretation — for interpreting unexpired patent claims and proposed claims brought before the PTAB, in favor of the one employed in Article III federal courts and International Trade Commission (ITC) proceedings.
- The change would affect IPR as well as post-grant review (PGR) and the transitional program for covered business method (CBM) patents. There is a 60-day window for public comment on the PTO's proposal.
Just last month, the Supreme Court defended the legality of IPR, ruling the process doesn't violate Article III of the Constitution. The argument there, which played out in a lawsuit between two oilfield services companies, was that IPR allows a patent to be revoked outside of a federal court, and as such goes against provisions established in the article.
IPR provides another outlet for knocking down potentially unsubstantiated patents, and has garnered mixed responses within the pharmaceutical industry. While the process remains intact for now, it could face further legal challenges in the future.
The PTO looks like it's trying to get ahead of those challenges. Its latest proposal, for example, would create more similarities between cases heard by the PTAB and federal courts — addressing the main point of contention in Oil States Energy Services LLC v. Greene's Energy Group LLC.
In its proposal, the PTO cited a study that found nearly 87% of patents at issue in the 2012 America Invents Act (AIA), which established the IPR process, were also subject to litigation in federal courts. "[T]he high percentage of overlap between AIA trial proceedings and district court litigation favors using a claim construction standard ... that is consistent," the PTO said in its proposal.
Additionally, the PTO is mulling another amendment that would have it "consider any prior claim construction determination in a civil action or ITC proceeding if a federal court or the ITC has construed a term of the involved claim previously using the same standard, and the claim construction determination has been timely made of record in the IPR, PGR, or CBM proceeding."