What is Nautilus, Inc. v. BioSig Instruments, Inc.1?
It is a decision of the US Supreme Court in which the Court explains the circumstances in which a US patent will be found to be invalid for failing to meet the 'definiteness’ requirement.
The US Patents Act requires a patent specification to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicants regards as his invention”. In US patent law, this is commonly called the ‘definiteness requirement’.
What is definiteness?
Prior to Nautilus, the US Courts considered that the definiteness requirement is not met when a patent claim is ‘not amendable to construction’ or is ‘insolubly ambiguous’. Put in other words, the requirement is not met, and a patent is invalid, where no meaning can be given to a patent claim.
What has arguably changed in view of this decision?
The Supreme Court has now formed the view that a patent claim is more likely to be invalid for not being definite where more than one meaning can be given to a claim.
In the words of the Court, a patent claim is indefinite when from reading in the light of the patent specification and prosecution history “it fails to inform with reasonable certainty those skilled in the art about the scope of the invention”.
The Court was of the view that this standard mandates clarity but at the same time, the Court recognised that ‘absolute precision is unattainable’ by virtue of the inherent limitations of language.
How will this decision impact on patent owners?
It should now be easier for a patent opponent to prevail on the ground lack of definiteness. That’s because before Nautilus, the opponent only prevailed where he could established that a claim had no meaning. A finding of more than one meaning would not have been sufficient.
After Nautilus, it now appears that the patent opponent will be more likely to prevail either where there is a finding that the claim has no meaning, or has more than one meaning.
What might patent owners do differently given Nautilus?
It is unclear if the USPTO will change its approach to examining claims for definiteness but what is clear is that every US Court considering a patent will be applying this new definiteness standard.
Given this, and that US claims are to be read in light of the specification and patent prosecution history, it now becomes even more important for patent owners to focus attention on the development of the portfolio well before the patent is granted. This probably means that a more closer review of patent drafting and careful analysis of legal submissions before the USPTO will be required.
Finally, Australian patent owners might reasonably expect to see prospective licensees and investors undertaking a more thorough due diligence of the patent estate. Novelty and obviousness will remain of key concern, but definiteness could well be of next importance!