top of page

Significant New Patent Office Rule Reshapes Strategic Approaches to Patent Claim Challenges

In a significant decision that promises to impact strategic thinking in patent claim challenges, the U.S. Patent and Trademark Office (USPTO) will soon adopt the same reading of claims in Patent Trial and Appeal Board (PTAB) post-grant proceedings as that used in federal district court. Any inter partes review (IPR), post-grant review (PGR) or covered business method patent review (CBM) filed with PTAB on or after November 13, 2018, will be subject to the claim construction standard used in Article III federal courts and the International Trade Commission, namely Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2015)(en banc). This narrower construction review potentially reduces the amount of prior art that can be introduced in a PTAB proceeding, and means that attorneys engaged in both federal court litigation and post-grant proceedings will now be motivated to take a more harmonized approach.

View entire article here.

1 view0 comments

Recent Posts

See All

Guide to Enforcing Foreign Judgments

In an increasingly globalized world, it is extremely important to understand what is involved in enforcing judgments against foreign assets. Given that there is no global system for enforcing a judgme


bottom of page