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Supreme Court Changes Standard For Drafting Patents

The U.S. Supreme Court has effectively raised the bar requiring sufficient definiteness be present in a patent application “to afford clear notice of what is claimed, thereby apprising the public of what is still open to them.” In a unanimous decision, on June 2, 2014, the Court reversed the Federal Circuit’s standard for “definiteness” and remanded Nautilus, Inc. v. Biosig Instruments, Inc. to the lower court. The Court held that “a patent is invalid for indefiniteness if its claims, 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.” The opinion addresses USC § 112(b) definiteness requirement, where a higher standard has now been created regarding the clarity with which patent claims need to be drafted. This decision is particularly likely to impact companies that file a range of patent applications seeking patent protection for innovative technology being developed.

This ruling also highlights the fact that courts may now be more willing to invalidate a granted patent should doubts as to the definiteness of the claims arise. Accordingly, the newly established standard of “reasonable certainty” places more emphasis on the importance of claim drafting by a patent practitioner, when viewed against the Federal Circuit’s previously used “insolubly ambiguous” test.

Additionally, even though patent applications naturally fall within the realm of the “person with ordinary skilled in the art,” patent practitioners will be charged with the responsibility of ensuring definiteness is present within the four corners of a patent application. By holding patent owners to a potentially higher standard when pursuing enforceability of their patent rights, the onus is put on patent practitioners to draft claims that are not “addressed to lawyers… but rather, to those skilled in the relevant art.”

The PTAB Immediately Applies the New Standard

The new “reasonable certainty” standard is already making a difference. On June 4, the Patent Trial and Appeal Board (PTAB) employed the new standard to invalidate a claim. Application No. 12/020,684 involves a patent for “Wireless Sensing and Communication System for Traffic Lanes.” The disputed language in the patent involved a system claim where “roadway conditions from multiple roadways can be obtained and processed at the remote facility,” was found to be indefinite. The Appellants argued the features following the “can be” limitation should be interpreted as optional and, accordingly, the claim is not indefinite. However, the PTAB agreed with the Examiner and found the claim to be indefinite because “[i]t is unclear whether the limitation refers to a capability that is required to be present in the invention or whether it refers to a system capability that is a mere possibility that is not required.”

The PTAB stated that patent drafters are in the best position to resolve ambiguities in the claims. Accordingly, patent claims need to be carefully drafted and the specification should provide sufficient disclosure to ensure the claims are definitive and not ambiguous.  For example, patent practitioners need to be cautious when using words or phrases, such as “can” which may prove problematic given that the word carries multiple meanings and may indicate an ability or capability, or alternatively, be used to indicate a possibility or probability.

This is just one example of how, during the drafting of a patent application, claims need to be analyzed and appropriate attention should be given to drafting the specification. In addition, during prosecution of the application, assertions or claim amendments entered in the prosecution history need to be thoroughly evaluated.  Given the relative costs of patent prosecution and litigation, it is increasingly prudent to devote more attention to reviewing the clarity of claims. This is the cheapest and most efficient way to comply with the new reasonable certainty standard created by the Supreme Court.