The U.S. Patent and Trademark Office has re-affirmed its decades-old position on claim interpretation in proceedings before the Office. The USPTO has consistently given patent claims their broadest reasonable claim interpretation when examining patent applications. According to the USPTO, that approach provides an appropriate balance between applicants and the public by giving the public an indication of the maximum scope of the claims, while permitting applicants to amend their claims in USPTO proceedings so that they can avoid ambiguities and overly broad claims. The USPTO's goal has been to issue patents that are clear and defensible early in the patent process.
The new America Invents Act introduces inter partes and post grant review proceedings into patent law. Since those proceedings apply to patents that have already been issued, and have already been examined under the "broadest reasonable interpretation" standard, the question arises whether it would be appropriate to use a standard in post-issuance proceedings that is different from the standard used in initial examination. That question is made more complex by language added by the AIA in new section 301 of the patent statute, which appears to require the USPTO to determine the "proper meaning" of patent claims, instead of applying the "broadest reasonable interpretation." Thus, it has been suggested that the USPTO should interpret claims as they would be interpreted in district court proceedings, which is a somewhat higher standard and would require claims to be interpreted more narrowly.1
When patents are in litigation before a district court, they enjoy a statutory presumption that they are valid, and a party challenging a patent is subject to the "clear and convincing" standard of proof to demonstrate invalidity. Because of this presumption of validity, and because in district court there is no opportunity to amend patent claims, district courts wherever possible interpret claims to uphold their validity.
The USPTO is not faced with those issues in proceedings before the Office. Patent claims being examined in the USPTO do not enjoy a presumption that they are valid. Moreover, in USPTO proceedings, patent applicants and patent owners (as well as the USPTO) have the ability and authority to amend patent claims.
Therefore, citing the "important public notice function" of patent claims, the USPTO has announced that it has declined to alter its long-standing policy of giving claims their broadest reasonable interpretation. According to the USPTO, the broadest reasonable claim interpretation encourages patent applicants and patent owners to draft claims that are clear and unambiguous, and because patent owners in inter partes and post grant reviews will have an opportunity to amend their claims, the claims will be able to properly reflect the patent owner's inventive contributions and remain within the bounds of the prior art while ensuring that uncertainties in claim scope and meaning are avoided. In fact, the USPTO has long maintained a different standard for indefiniteness invalidity than the standard mandated in the federal courts.
There has been some discussion concerning whether applying the broadest reasonable interpretation standard to inter partes and post grant reviews under the AIA could lead to double standards between ongoing patent litigation and the reviews before the USPTO. While it is possible that a court could interpret patent claims differently from the USPTO, the AIA does have some provisions to mitigate that possibility. Under the AIA, there are limits to a petitioner's ability to file a review when there is ongoing district court litigation.
The USPTO is quite concerned about problems that could arise if it adopted a standard of claim interpretation other than the broadest reasonable interpretation for post-grant reviews. For example, it is possible that there could be multiple proceedings in the USPTO. There may be an inter partes review of a patent that is also subject to an ex parte reexamination, and there may be co-pending applications all employing the same claim terminology. Different claim interpretation rules for different proceedings could lead to serious inconsistencies. In such an example, the same amendment made in an inter partes review and in a co-pending application could result in an allowance in one case and a rejection in the other, or the introduction of narrower language in a co-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. This could produce bizarre results, and would not be useful to either patentees, applicants, or the public.
So, to avoid different alternative claim constructions for a claim term arising in the various proceedings before the Office and possible inconsistent results, the USPTO is staying with the "broadest reasonable interpretation" standard for all proceedings before the USPTO.
This will require applicants and patent owners to be more careful when prosecuting new applications, and when considering the effect of prior art on claims in issued patents subject to post-grant and inter partes reviews. Patent claims may be more vulnerable to invalidity in the USPTO compared to district courts under the "broadest reasonable interpretation" standard. On the other hand, patent claims can be amended in post-grant and inter partes reviews to avoid prior art, whereas that is not possible in district court proceedings, thus enabling patent owners to avoid losing their patents entirely.
Patentees and their counsel will need to work closely together to ensure that patent claims are clear, precise, and unambiguous, beginning with the initial patent application, to minimize the risk of inconsistent claim interpretations between the USPTO and the courts.
Footnotes
1 While perhaps well intentioned, this suggestion ignores the reality that the PTAB must decide whether to initiate an after-issuance review based upon the evidence and argument contained in the petition, without the benefit of briefing and adversarial argument on claim interpretation that is available in the district courts. This pleading stage determination forces the PTAB to adopt a standard for claim interpretation short of a full Markman determination, and the Office has chosen to be consistent with its examination phase standard of applying the broadest reasonable construction.
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