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CHANGES TO THE CLAIM CONSTRUCTION STANDARD FOR INTERPRETING CLAIMS IN TRIAL PROCEEDINGS BEFORE AND AFTER THE PATENT TRIAL AND APPEAL BOARD FINAL RULES

  Implementation:

The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule.

• The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips, to construe patent claims and proposed substitute claims in AIA proceedings in which trial has not yet been instituted before the effective date of the final rule.
• The Office will continue to apply the BRI standard for construing unexpired patent claims and proposed substitute claims in AIA proceedings where a petition was filed before the effective date of the final rule.

As to comments received regarding filing a prior claim construction determination, parties should submit the prior claim construction determination by a federal court or the ITC in an AIA proceeding as soon as that determination becomes available.

Preferably, a prior claim construction determination should be submitted with the petition, preliminary response, or response, with explanations.

 

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