Understanding patent claim construction

On behalf of Kaufhold & Dix Patent Law posted in Patent Law on Tuesday, October 23, 2018.

The legal trade features an expansive glossary of terms. There are so many that are so confusing that it suggests Winston Churchill’s quote, “It is a riddle, wrapped in a mystery, inside an enigma.” In patent law, the term “claim construction” is one that is enigmatic, and because it is making headlines, it may be worth looking at a little more deeply.

What made made recent news is the appearance in the Federal Register of a U.S. Patent and Trademark Office final rule announcing that it is, “changing the claim construction standard applied during inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB).” What does this mean?

Understanding the foundation

To appreciate the significance of this action, it’s helpful to ask, what is claim construction? Those seasoned in intellectual property law appreciate that the crux to a solid patent lies in the claims made to explain what makes the invention unique. The language of the claims creates the framework by which regulators can determine if a patent is valid considering prior art or obviousness, or the justification of a patent holder’s infringement claim against a possible competitor.

That means the more detailed a patent application is, the better.

What the rule change means

What the new rule does is replace the PTAB’s existing standard, based on the “broadest reasonable interpretation” of claims, with a standard that is more consistent with the one used by federal courts and the International Trade Commission.

It’s hard to know what effect the rule change will have on cases. It doesn’t become effective until next month. While many legal observers welcome the change as needed to counter what has been a too-broad standard that hurts patent holders, others say they don’t think it will make much of a difference in how the PTAB rules in IPR cases.

Regardless of what might be, what remains clear is that a lot will continue to ride on making sure that proper language use and depth of detail will remain important. And in that regard, it’s wise to consult a knowledgable attorney.