Patent Claims Definiteness: Navigating Differing Pre- and Post-Issuance Standards After Nautilus and Packard

Description

On June 2, 2014, the Supreme Court held unanimously that the Federal Circuit’s “insolubly ambiguous” standard for indefiniteness “breeds lower court confusion.”  On May 6, 2014, the Federal Circuit Court of Appeals held per curiam in In re Packard, Slip Op. 2013-1204 that the USPTO did not have to apply the “insolubly ambiguous” indefiniteness standard of the Federal Circuit.

Where does that leave the patent practitioner with different standards for indefiniteness depending on whether the claim is pre-issuance in the PTO or post-issuance in the courts as discussed in Packard and MPEP § 2173.02?  Or does the Supreme Court’s standard of “reasonable certainty” mirror “reasonably ascertainable” as set out in the MPEP § 2173.05(e)?

And what about PTAB CBM and PGR proceedings? CBM and PGR relate to issued claims, but in the Patent Office, at least during prosecution, the applicant has the ability to amend the claims to overcome any indefiniteness assertions prior to issuance.  So far, that ability to amend has been almost nonexistent in IPRs, and in fact post-grant proceedings are poorly equipped to deal with any amended claims because examination by an expert USPTO examiner of new or amended claims is not, at present, part of the proceedings.

Will there be more successful §112 arguments in PGR/CBMs in light of the Supreme Court’s ruling in Nautilus?  If Packard means that the standard from Nautilus applies in post-grant review, does that mean the PTAB never has to defer to the examiner’s determination on indefiniteness, because they are always going to be applying a completely different (post-issuance) standard than the examiners?

Listen as our authoritative panel of patent attorneys discusses the impact of Nautilus and Packard on your daily patent practice. The panel will offer best practices to navigate pre-and post-issuance scrutiny in light of Nautilus and Packard.