Because the public must understand the patent claims to determine what requires a license from the patent owner, 35 USC 112, paragraph 2, requires the specification conclude with one or more claims that "particularly point out and distinctly claiming" the subject matter which the applicant regards as the invention. In short, the patent claims must be definite to be valid under 35 USC 112.
In recent years, the Federal Circuit has held a patent claim is definite as long as the claim is "amenable to construction" and not "insolubly ambiguous."
On June 2, 2014, the US Supreme Court held in Nautilus v. Biosig Instruments involving a patent claiming a heart rate monitor used with exercise equipment that "the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement. In place of the "insolubly ambiguous" standard, we hold 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."
In short, the US Supreme Court has made it easier to challenge the validity of patent claims for indefiniteness.
Copyright © 2014 Robert Moll. All rights reserved.
