The Supreme Court just changed the “definiteness” requirement for patents

by John Roberts on June 2, 2014

Today the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. changed the standard for definiteness required to fulfill the statutory requirement that patent claims particularly point out and distinctly claim the subject matter that the applicant regards as the invention. In Nautilus, the U.S. Supreme Court unanimously rejected the “insolubly ambiguous” standard previously set out by the Federal Circuit:

It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” against which this Court has warned.

No. 13-369, slip op. at 12 (June 2, 2014) (Citation omitted).

Instead, the Supreme Court announced a new, tougher standard for indefiniteness that requires “reasonable certainty,” holding 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.” Id. at 1.

The Court explained that “a patent must be precise enough to afford clear notice of what is claimed, thereby apprising the public of what is still open to them.” Id. at 10 (Citations and quotations omitted). The Court viewed its holding as achieving the correct balance between opposing considerations, stating that “[t]he definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.” Id. at 11.

This is yet another instance of the Supreme Court reversing the Federal Circuit and tightening standards to make patents harder to get and rendering more patents invalid.

No. 13–369. Argued April 28, 2014—Decided June 2, 2014

John Roberts



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