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Broadest Reasonable Interpretation Standard in Post Grant Review Proceedings

Posted Tuesday, May 26, 2015 by Jim Ruttler

When the Patent Office reviews issued patents in the new Post Grant Review Proceedings, they use the Broadest Reasonable Interpretation Standard. This means that they interpret the claim language in its broadest possible light consistent with the way that claims are interpreted during examination. This is a different standard than Courts use when reviewing issued patent claims. The Courts use the Phillips standard, which is essentially interpreting the claims in view of the specification and with a presumption of validity. The Phillips standard therefore is more narrow than the Broadest Reasonable Interpretation Standard. This matters because the broader the claims are interpreted to be, the easier it is to invalidate them with prior art.

The Broadest Reasonable Interpretation makes sense during examination because Applicants have the ability to amend the claims to clarify any potential ambiguity. The intent of examination is to produce clear and unambiguous claims and so examining them with a broad view assists in satisfying this goal.

The Phillips standard for issued patents also makes sense. Patents are presumed valid once issued and there is limited opportunity to amend the claims once a patent has issued. Furthermore, it is undesirable for a patent to cover more than what has been invented, so having claims interpreted narrowly in view of the specification furthers these goals.

Now, with respect to the Post Grant Review proceedings, it makes absolutely no sense to interpret the claims under the Broadest Reasonable Interpretation Standard. First, examination has been completed and patents are supposed to enjoy a presumption of validity. Second, there is no (very limited) opportunity for amendments to the claims. Third, the Courts are using a completely different standard when potentially simultaneously reviewing the same patent claims.

Using this broad standard, the Patent Office has been invalidating claims and an astonishingly high percentage. Yes, the same Patent Office that is granting patents is turning around and invalidating the same patents. All hope is not lost, however, as it appears that the chorus for change is growing louder and louder with more large patent owners realizing the significance of the problem.

Until such time that the standard changes, it is wise to employ a defensive strategy such as pursuing multiple patents, drafting narrow dependent claims, and maintaining pending applications.

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