PHOSITA

Authored by Ann Robl, June 24, 2016 at 2:56 pm

In its June 20, 2016, decision in Cuozzo Speed Technologies v. Lee, the U.S. Supreme Court confirmed the USPTO’s authority to decide to use the broadest reasonable construction for claim terms of a patent in an inter partes review (IPR) and denied Cuozzo’s attempt to appeal the IPR institution decision. The practical effect of Cuozzo is that post-grant proceedings will proceed as they have since they were first authorized by the America Invents Act.

Maintaining this claim construction standard means that the standard used in the original prosecution of the patent will continue to be used in post-grant reviews. This would be logical and fair if the Patent Trial and Appeal Board had similar examination procedures for amendments as in the original prosecution. But the nature and timeframe of the post-grant proceedings precludes that type of examination. This results in the Board denying the vast majority of amendments. According to the USPTO, based on data through April 30, 2016, the Board had only granted, or granted-in-part, 6 of 118 reviewed motions to amend claims.

If the USPTO maintains the broadest reasonable construction standard in post-grant proceedings, perhaps it should look more deeply at how the single chance to amend is procedurally enacted. For example, claim construction could be finalized before the motion to amend must be filed so that the amendment may take into account those final constructions.

In the meantime, post-grant proceedings continue as normal.

 

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