The Scope of Definiteness Required in Patent Claims after Nautilus v. Biosig

McDonnell Boehnen Hulbert & Berghoff LLP
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In yesterday's decision, the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. clarified the scope of definiteness required to fulfill the requirement that the patent claims particularly point out and distinctly claim the subject matter which 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."

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