Today, the Computer & Communications Industry Association submitted its comments opposing the Patent Office’s proposal to change the claim constructionSee Markman hearing standard applied in AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. trials from the current broadest reasonable interpretation (BRI) to the Phillips standard district courts apply.
In brief, there are three main concerns:
- A change from BRI to Phillips is unjustified by the historical evidence. This is particularly true in light of the major changes to AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. proceedings caused by the Aqua Products and SAS decisions and in light of the PTO’s expressed desire to review amendment procedure in AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. trials.
- A change would also fail to achieve the expressed goal of increasing consistency between the district courts and the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. while creating new risks of inconsistency within the PTOPatent and Trademark Office, informally used interchangeably with USPTO. and within the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. itself.
- The use of the Phillips standard appears to run counter to both the text and the intention of the America Invents Act.
While CCIA opposes the proposed change, in the event the change is adopted, CCIA proposes certain modifications to the rule to mitigate the procedural risks the rule would create.
The filed comments explain CCIA’s concerns in significantly more detail.
