The United States Patent & Trademark Office (USPTO) issued a memorandum dated January 06, 2021, to the Patent Trial and Appeal Board (PTAB) clarifying the standard for indefiniteness in post-grant proceedings under America Invents Act (AIA). The memorandum directed the PTAB to follow the same indefiniteness standard used in district courts in post-grant proceedings under the AIA. The Board must now analyze indefiniteness in post-grant trial proceedings as per the standard set forth in Nautilus, Inc. As perNautilusapproach, a claim is invalid as indefinite “if the claim, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

Background

The USPTO applies the definiteness requirement of 35 U.S.C. § 112 in the context of the examination, appeals from the examination, and, less frequently, AIA post-grant proceedings. The USPTO and the US courts generally approach the definiteness requirement of 35 U.S.C.§ 112 as part of the process of construing claims. Until recently, the USPTO and the courts used different approaches for both claim construction and indefiniteness for AIA post-grant proceedings. The present memorandum sets forth the PTAB to follow the uniform approach to analyzing claims for indefiniteness in post-grant proceedings under the AIA in line with the court’s analyses. The present memorandum is only for AIA post-grant trial proceedings and does not apply to the USPTO's standards to claim construction or indefiniteness outside of the AIA post-grant proceeding context such as the examination and appeal from the examination.

Current Indefiniteness Standard at USPTO

In 2014, the federal circuit, in “In Re Packard” approved the USPTO’s long-standing approach for assessing indefiniteness during patent examination. As per the Packard standard, "[a]claim is indefinite when it contains words or phrases whose meaning is unclear." The USPTO used the Packard standard to assess the indefiniteness of claims during the examination as well as in AIA post-grant trial proceedings. In the same year, the Supreme Court decided the standard for questions of indefiniteness arising in the district courts in Nautilus, Inc. v. Biosig Instruments, Inc., As per Nautilusstandard, a claim is invalid as indefinite “if the claim, read in light of the specification delineating the patent, and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

In 2018, the USPTO changed the claim construction standard for post-grant trial proceedings to align with the same claim construction standard used to construe claims in district courts. Since that change, the PTABhas noted confusion as to whether Nautilus or Packard standard applies to questions of indefiniteness.

The USPTO’s current memorandum explains that the Packardstandard no longer applies in post-grant trial proceedings and the PTAB shall follow the Nautilus standard for analyzing the indefiniteness of claims in AIA post-grant proceedings. In particular, the USPTO clarifies that eliminating the differences between indefiniteness approaches used in the district courts and before the Board in AIA post-grant proceedings by way of this memorandum will lead to greater uniformity and predictability, improve the integrity of the patent system and help increase judicial efficiency.

Conclusion

In AIA post-grant trial proceedings, the PTAB’s standard for analyzing the indefiniteness of claims will now adhere to the standard used by the district courts, as set forth in Nautilus.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.