Patent Claims Definiteness: Navigating Differing Pre- and Post-Issuance Standards After Nautilus and Packard
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide patent counsel with an examination of the standard for indefiniteness following the Supreme Court’s decision in Nautilus v. Biosig Instruments and the Federal Circuit’s decision in In re Packard and whether the decisions leave different standards depending on whether the claim is pre-issuance or post-issuance. The panel will analyze the impact the decisions on patent claim drafting and challenging claims, and offer best practices for patent counsel going forward.
Outline
- Understanding 35 U.S.C. §112(b) (“indefiniteness”)
- Packard per curiam
- Nautilus at the Supreme Court
- Best practices for drafting and prosecuting claims in the USPTO
- Best practices for preparing strong patent claims that will hold up in litigation and before PTAB under any of the definiteness standards
Benefits
The panel will review these and other key questions:
- How do the decisions distinguish the USPTO's standard and the court's standard for indefiniteness?
- What are the implications of the Nautilus and Packard rulings for patent counsel in drafting applications? And in challenging claims?
- What is the proper §112 analysis in PTAB patent challenges?
Faculty

Erika H. Arner
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish... | Read More
Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish and grow patent portfolios, design and implement procedures to protect intellectual capital, and formulate company-wide IP strategies and policies. She co-authored a petition for a writ of certiorari in Bilski v. Doll and co-authored an amicus curiae brief to the federal circuit in In re Bilski.
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John J. Cheek
Senior Corporate Counsel
Caterpillar

Thomas L. Irving
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
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