By Godson Umejiego, Correspondent USA

The United States Patent and Trademark Office (USPTO) has issued a guidance memorandum to the Patent Trial and Appeal Board (PTAB) regarding the approach to indefiniteness under 35 U.S.C. § 112 in America Invents Act (AIA) post-grant proceedings.

This memorandum, issued under the Director’s authority to set forth binding agency guidance, ensures that the agency’s approach to analyzing indefiniteness in AIA post-grant proceedings will adhere to the approach used in district courts, as set forth in the Supreme Court’s Nautilus decision. Under Nautilus, a claim of a patent challenged for indefiniteness is unpatentable for indefiniteness if the claim, read in light of the patent specification and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

Aligning the indefiniteness approach used in AIA proceedings before the PTAB with the approach used in the district courts will lead to greater uniformity and predictability, improve the integrity of the patent system, and help increase judicial efficiency.