Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35 U.S.C. § 112 for AIA trials. The PTAB must now use the indefiniteness test set forth by the Supreme Court in Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). This change in standard is beneficial to patent owners.
Pursuant to 35 U.S.C. § 112(b), the claims of a patent or patent application need to “particularly point out and distinctly claim the subject matter … regard[ed] as the invention.” If the claims do not meet that threshold, they are considered indefinite. The USPTO conducts an indefinite assessment during examination, including ex parte appeals, reexaminations, and reissue proceedings, as well as during AIA trials. Continue Reading