September 29, 2022

Volume XII, Number 272

Advertisement

September 28, 2022

Subscribe to Latest Legal News and Analysis

September 27, 2022

Subscribe to Latest Legal News and Analysis

September 26, 2022

Subscribe to Latest Legal News and Analysis
Advertisement

Federal Circuit Approves PTO Standard for Rejecting Indefinite Claims

Anyone seeking U.S. patent protection should take notice of a recent Federal Circuit decision governing the standard of clarity required for patent claims proffered in the U.S. Patent and Trademark Office (PTO)In re Packard, No. 2013-1204 (Fed. Cir. May 6, 2014), places the court’s approval on the PTO’s practice of rejecting claims that contain “words or phrases whose meaning is unclear.” Clarity, or definiteness, in patent claims has been the subject of considerable recent commentary, and the Packard decision should complement an impending Supreme Court decision that is expected to resolve closely related definiteness questions.

Under 35 U.S.C. § 112(b), a patent claim must particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. As courts have explained, the statutory definiteness requirement functions to screen out claims cast in ambiguous, vague, or indefinite terms so that the public can discern the boundaries of a patent owner’s exclusive rights. Substantive standards have been set forth for determining indefiniteness of claims in an issued patent, but the Federal Circuit had never before defined the proper standard to be used during patent examination.

In Packard, the PTO rejected all of the applicant’s proposed claims as indefinite during patent prosecution. The applicant appealed, arguing that the oft-cited and relatively forgiving “insolubly ambiguous” standard controls all indefiniteness inquiries, whether directed to an issued patent in litigation or pending patent claims in the PTO. Accordingly, the applicant claimed that the PTO erred by applying its more exacting “unclear meaning” standard pursuant to MPEP § 2173.05(e).

The Federal Circuit concluded that the PTO used the correct definiteness standard for patent prosecution. Emphasizing that patent prosecution differs from post-issuance inquiries in that the applicant can still clarify indefinite claim language by amendment, the court held that the PTO need only issue “a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, or otherwise unclear,” which then shifts the burden to the applicant to offer a satisfactory amendment or persuasive explanation of why the language is not unclear. Because the applicant in Packard failed to provide a thorough and persuasive response focused on the claims, the PTO’s rejection was upheld.

The court took great pains, both in the panel opinion and in a lengthy concurrence by Judge S. Jay Plager, to emphasize that it was reaching only the issue of indefiniteness in pre-issuance PTO proceedings, noting that the Supreme Court’s forthcoming decision in Nautilus, Inc v. Biosig Instruments, Inc. will resolve the related standard for indefiniteness as to issued patent claims.

©2022 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume IV, Number 129
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Kevin P. Moran, Intellectual Property attorney, Michael Best, manufacturing industry legal counsel,
Partner

Clients look to Kevin for strategic counsel on the protection of their intellectual property, including acquisition of, enforcement of, and defense against United States and international patents.

His strong track record in these areas, paired with a technical background as a product engineer, give Kevin a unique perspective on the challenges facing developers of mechanical, electro-mechanical, and biomedical technologies.

Kevin has significant experience in the areas of fitness equipment, motorcycles, vehicle braking...

262-956-6510
Andrew Dufresne, intellectual property, attorney, Michael Best, law firm
Attorney

Andrew Dufresne is an attorney focusing his practice on intellectual property law. Dr. Dufresne has experience with patent prosecution, reexamination, and post-grant proceedings before the United States Patent and Trademark Office; patent litigation matters in federal court at the trial and appellate levels; and strategic counseling in other patent-related matters, including patentability and freedom-to-operate assessments.

608-283-0137
Advertisement
Advertisement
Advertisement