To obtain a patent, an invention must be new, useful, and nonobvious compared to prior art. The patent claims must “particularly point out and distinctly claim the subject matter” as to convey the scope of the invention with sufficient clarity. 35 U.S.C. § 112. If the claims fail to do so, the patent is deemed “indefinite” and therefore can be rejected by an Examiner in the U.S. Patent Office, or found to be invalid after issuance. Recently, the U.S. Supreme Court tolled in on the standard for determining indefiniteness.
The New Standard
On June 2, 2014, the U.S. Supreme Court ruled in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) holding that a patent is “invalid for indefiniteness if its claims, read in the 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.” Diluting the nuance, it means that the old “insolubly ambiguous” test has now been replaced with a new “reasonable certainty” standard to determine a patent’s definiteness.
Biosig first sued Nautilus in 2004 for allegedly selling exercise equipment that infringed on Biosig Instrument’s patent. Biosig has a patent that monitors a person’s heart rate during exercise. The novelty of the invention is detecting electrical signals from the heart (ECG signals) and distinguishing these signals from electrical signals generated by other muscles (EMG signals). The main patent claim in dispute refers to electrodes in the heart-rate monitor “in a spaced relationship with each other.” Nautilus argued that the language used is indefinite. The Supreme Court did not rule on the merits, but it did offer a new standard for the lower courts to use when determining the definiteness requirement of 35 U.S.C. § 112.
So what does all this mean?
A lower standard for determining that the claims of a patent may be indefinite can affect both patent litigation and patent prosecution.
In patent litigation:
The reasonable certainty standard relaxes the requirements for indefiniteness, meaning it may be easier for defendants like Nautilus to show that a patent is indefinite, and thus invalid. Courts will still look to the patent’s specification and perhaps more strongly to those skilled in the art. Defendants in patent infringement lawsuits should consider using expert testimony even more so now. It is possible that more cases will now turn on expert testimony concerning invalidity issues.
The new standard may also be another step forward in solving the issue of Non-Practicing Entities (NPEs). These NPEs (sometimes called patent trolls), as their name suggests, own the rights to a patent but do not actually practice in the art to which they are claiming ownership. The reasonable certainty test makes it easier for defendants to show that a patent is indefinite. Thereby making it a bit harder for patent trolls to claim infringement.
In patent prosecution:
Relaxing the requirements for indefiniteness will also impact the U.S. Patent Office in that an Examiner can more readily find that a patent is indefinite under 35 U.S.C. § 112. An increased amount of rejections by the Examiner may cause an increase in patent prosecution costs, as well as the time it takes to secure a patent.
Inventors who want to accelerate the patent prosecution process and keep costs down should strongly consider seeking counsel with professionals who understand the inner workings of the U.S. Patent Office. Taylor IP focuses on patent preparation, prosecution and opinions. We prepare and obtain strong patents that can be enforced during litigation.