MPEP Q & A 191: Final Rule in the Changes to the Claim Construction Standard

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Question:

What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” state?

Answer:

In this final rule, the Office revises the rules to provide that a patent claim, or a claim proposed in a motion to amend, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.

  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • This change replaces the BRI standard for construing unexpired patent claims and proposed substitute claims in IPR, PGR, and CBM proceedings with the federal court claim construction standard, which is articulated in Phillips and its progeny.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a brief summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in 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’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 190: AIA Proceeding Expenses Under Phillips

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Question:

Have parties to AIA proceedings under Phillips required expanded page limits or otherwise incurred more expenses in their AIA trials than parties in AIA proceedings under BRI?

Answer:

PTAB has not found that parties to these AIA proceedings under Phillips require expanded page limits or otherwise incur more expense in their AIA trials than parties in AIA proceedings under BRI.

  • The USPTO’s experience is that arguments under Phillips are not more complicated or more lengthy than arguments under the BRI standard.
  • Rather, both standards are familiar to patent practitioners appearing before the USPTO and district courts.
  • Consequently USPTO expects that these proceedings utilizing the Phillips standard will operate procedurally in much the same way as BRI proceedings using the BRI standard, that they will cost USPTO and parties no more to conduct, and that they will be completed within the statutory deadline.
  • In sum, the direct result of USPTO changing the claim construction standard argued in some AIA trials from one well-known standard to another well-known (as noted, a standard already used in some AIA trials) will not have direct economic impacts.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a brief summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in 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’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding

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Question:

Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding.

Answer:

The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding:

  • There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment.
  • After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal.
  • After filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete).
  • After a final decision by the Board, where there is no further timely appeal to the Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board.
  • After the Federal Court appeal process has been completed and the case is returned to the examiner.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter Partes Reexamination.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2687 of the MPEP.  The following is a brief summary of this section:

2687  Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding

Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable.

This section covers further details on the NIRC such as instances where a NIRC would be appropriate, preparation of the NIRC action, examiner’s amendment to place the proceeding in condition for notice of intent to issue an inter partes reexamination certificate, reasons for patentability and/or confirmation, preparation of the case for publication, and reexamination proceedings in which all the claims are canceled.

MPEP Q & A 188: What Should Applicant Initiated Interview Request Form Identify?

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Question:

What should the Applicant Initiated Interview Request form identify?

Answer:

The Applicant Initiated Interview Request form should identify:

  • the participants of the interview
  • the proposed date of the interview
  • whether the interview will be personal, telephonic, or video conference
  • and should include a brief description of the issues to be discussed.

Chapter Details:

The answer to this question can be found in chapter 400 of the MPEP. This chapter covers Representative of Inventor or Owner.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 408 of the MPEP.  The following is a brief summary of this section:

408    Interviews With Patent Practitioner of Record

When an applicant is initiating a request for an interview, an “Applicant Initiated Interview Request” form should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.

MPEP Q & A 187: Two Final Rules Dealing with Claim Construction Standard

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Question:

What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”?

Answer:

In the first final rule, the Office changed the existing rules to, among other things:

  1. Increase the page limit for patent owner’s motion to amend by ten pages and allow a claims appendix to be filed with the motion; and
  2. increase the page limit for petitioner’s reply to patent owner’s response by ten pages.

In the second final rule, the Office changed the existing rules to, among other things:

  1. Allow new testimonial evidence to be submitted with a patent owner’s preliminary response;
  2. allow a claim construction approach that emulates the approach used by a district court for claims of patents that will expire before entry of a final written decision;
  3. replace page limits with word count limits for major briefing; and
  4. add a Rule 11-type certification for papers filed in a proceeding.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in 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’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114

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Question:

Name two types of patents that may not use the provisions of 37 C.F.R. 1.114.

Answer:

The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents:

  • design patent applications
  • provisional applications
  • applications filed before June 8, 1995
  • international applications filed before June 8, 1995
  • an international design application
  • reexamination patents

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 706.07(h) of the MPEP.  The following is a brief summary of this section:

706.07(h)   Request for Continued Examination (RCE) Practice

Filing a request for continued examination (RCE) provides a means for the applicant to continue with the prosecution of his or her application if prosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. 1.53(d). This section covers RCE practice in detail.

MPEP Q & A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of?

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Question:

What must an application filed under 37 CFR 1.53(d) be filed before the earliest of?

Answer:

An application filed under 37 CFR 1.53(d) must be filed before the earliest of:

  • (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application;
  • (B) abandonment of the prior application; or
  • (C) termination of proceedings on the prior application.

Chapter Details:

The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 506 of the MPEP.  The following is a brief summary of this section:

506    Completeness of Original Application

This section covers the completeness of the original application including both nonprovisional and provisional applications. A Notice of Incomplete Application will be mailed for incomplete nonprovisional applications. The filing date will not be granted until the nonprovisional application is deemed complete. In addition, no filing date will be granted for an incomplete provisional application.

Applications are deemed informal and therefore not granted a filing date for numerous reasons including if it is typed on both sides of the paper.

A discussion on filing dates for nonprovisional and provisional applications is also included in this section.

MPEP Q & A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A?

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Question:

A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis; Step 2A and Step 2B. What specifically should a rejection identify under Step 2A?

Answer:

For Step 2A, the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception.

  • For example, if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.
  • Similarly, if the claim is directed to a law of nature or a natural phenomenon, the rejection should identify the law of nature or natural phenomenon as it is recited (i.e., set forth or described) in the claim and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2106.07(a) of the MPEP.  The following is a brief summary of this section:

2106.07(a)  Formulating a Rejection For Lack of Subject Matter Eligibility 

After determining what the applicant invented and establishing the broadest reasonable interpretation of the claimed invention, the eligibility of each claim should be evaluated as a whole using the analysis detailed in MPEP § 2106. If it is determined that the claim does not recite eligible subject matter, a rejection under 35 U.S.C. 101 is appropriate. When making the rejection, the Office action must provide an explanation as to why each claim is unpatentable, which must be sufficiently clear and specific to provide applicant sufficient notice of the reasons for ineligibility and enable the applicant to effectively respond.

MPEP Q & A 183: When Changes to the Claim Construction Standard Apply

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Question:

When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” apply?

Answer:

As shown in the supplement …

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 (November 13, 2018).

  • 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.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in 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’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 182: Characteristics of Ex Parte Reexamination

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Question:

List one of the basic characteristics of ex parte reexamination.

Answer:

The basic characteristics of ex parte reexamination are as follows:

  • Anyone can request reexamination at any time during the period of enforceability of the patent;
  • In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection;
  • A substantial new question of patentability must be present for reexamination to be ordered;
  • If ordered, the actual reexamination proceeding is ex parte in nature;
  • Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office;
  • If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a reexamination certificate;
  • The scope of a claim cannot be enlarged by amendment;
  • All reexamination and patent files are open to the public;
  • The reexamination file is scanned into IFW to provide an electronic format copy of the file.

Chapter Details:

The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2209 of the MPEP.  The following is a brief summary of section 2209.

2209  Ex Parte Reexamination

The reexamination statute and rules permit any person to file a request for an ex parte reexamination containing certain elements and the fee required. The Office initially determines if “a substantial new question of patentability” is presented. If such a new question has been presented, reexamination will be ordered.

This section covers how reexamination proceedings differ from regular examination procedures and the basic characteristics of ex parte reexamination. For instance, anyone can request reexamination at any time during the period of enforceability of the patent and the prior art considered during reexamination is limited to prior art patents or printed publications.