Response to the Proposed Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board

  • Author(s): John Allison, Wissam Aoun, , Andrew Chin, Christopher Cotropia, Dennis Crouch, Loletta Darden, Gregory Dolin, Stuart Graham, Yaniv Heled, Mark Janis, Jay Kesan, Mark Lemley, Yvette Liebesman, Jonathan Masur, Robert Merges, Adam Mossoff, Kristen Osenga, Arti Rai, Ted M. Sichelman, Saurabh Vishnubhakat
  • Posted: 9-2018
  • Legal Studies #: 18-28
  • Availability: Full text (most recent) on SSRN


We the undersigned professors of law and economics offer this comment on the USPTO’s notice of proposed rulemaking to change how the Patent Trial and Appeal Board will construe patent claims in its administrative trial proceedings. As a group, our research explores a wide range of issues in innovation, intellectual property, administrative process, and institutional design. What brings us together is our interest in the proper functioning of the U.S. patent system and Patent Office operations.

We appreciate the USPTO’s attention to the need for uniformity and predictability in the patent system, especially the agency’s ongoing efforts to improve the PTAB trial proceedings. For the reasons that follow, we support the proposed change away from the PTAB’s current broadest reasonable interpretation (BRI) standard to the approach set forth in Phillips v. AWH Corp.