Shutterstock_98079497Patents require definiteness

The U.S. Supreme Court has tightened the test for whether a patent "particularly point[s] out and distinctly claim[s] the subject matter which the applicant regards as [the] invention." 35 U.S.C. § 112, ¶ 2.

The Federal Circuit (which handles all appeals from district courts on patent matters) had interpreted the statute to require only that "the claim is 'amenable to construction,' and the claim, as construed, is not 'insolubly ambiguous.'" Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, slip op. at 1 (U.S. June 2, 2014) (quoting Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 898-99 (Fed. Cir. 2013)).

New test

Reversing a Federal Circuit ruling that upheld a patent on heart-rate monitoring technology on exercise machines, the unanimous Supreme Court held that, from now on, "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." Id.

Instead of applying the new formulation of what section 112, paragraph 2, requires, the Court remanded the case to the Federal Circuit for that purpose.

What next

The Nautilus ruling tolerates less vagueness in patents. It will therefore likely result in the invalidation of some patents that would have survived under the "insolubly ambiguous" standard. It may also produce more rejections of patent applications and greater precision in drafting of patent applications.