Tips For Meeting The Evolving Standard For Indefiniteness

Law360, New York (May 4, 2015, 3:43 PM EDT) -- The U.S. Supreme Court reigned in the Federal Circuit's indefiniteness standard for patent claims almost a year ago in Nautilus Inc. v. Biosig Instruments Inc.[1] Recently, on April 27, 2015, the Federal Circuit revisited the issue applying the Supreme Court's new test for indefiniteness in the Nautilus case on remand from the court. The Federal Circuit's opinion demonstrates that balancing the competing interests of clarity in claim scope and the recognition that "absolute precision is unattainable" will take some time to establish.[2] In the meantime, it is useful to review some of the more notable Federal Circuit decisions interpreting the Supreme Court's new "reasonable certainty" standard to examine useful patterns that are emerging. Among other things, these decisions emphasize that the best way to survive an indefiniteness challenge when drafting claims is to use the language of the claims in the specification, provide sufficient examples, and avoid or carefully choose subjective language, "words of degree," and ambiguities in prosecution....

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