U.S. patent laws require that claims in patent applications must point out and distinctly explain the subject matter of an invention. This public notice requirement is referred to as “definiteness” and a patent that fails to satisfy this requirement may be found to be invalid by the USPTO.

In 2014, the Supreme Court ruled in Nautilus, Inc. v. Biosig Instruments, Inc. that the proper standard for invalidating patent applications on grounds of indefiniteness requires “reasonable certainty” rather than the historical “insolubly ambiguous” standard. The Court held 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.”

The implications of the Nautilus decision on patent drafting was one of the several topics covered in a webinar hosted recently by LexisNexis IP to provide IP practitioners with some practical insights on how to draft the most challenge-proof patent applications. The webinar, “Optimizing Patent Applications: Drafting to Withstand Challenge,” can be viewed on-demand. This is the first in a series of three blog posts that will recap some of the highlights from that webinar.

The guest speakers in the webinar were: Gene Quinn, a patent attorney, law professor and founder of IPWatchdog.com; and Joseph Root, an Intellectual Property attorney, author of Rules of Patent Drafting, and founder of QualiPat.

“Drafting patent applications can be a daunting task, particularly today where virtually every commercially valuable patent will likely be challenged at the Patent Trial and Appeal Board (PTAB),” said Quinn. “You have to start doing this stuff correctly, right from the very beginning.”

Quinn and Root shared some practical implications of the Nautilus decision when drafting patents, such as the need to reduce ambiguity about a phrase in the patent claims and to avoid using “means-plus-function” language as much as possible in certain patents. In the end, however, they view the post-Nautilus “definiteness” standard to be more of a gradual shift than a sudden sea change.

“The truth is that things have not changed in the federal courts after Nautilus as much as we might have thought they were going to change,” said Root. “If you go back and apply the ‘reasonable certainty’ test to decisions that turned on the ‘insolubly ambiguous’ standard, I don’t think you’re going to find many instances where the result would have been markedly different.”

Quinn talked specifically about the value of patent software tools – such as LexisNexis PatentOptimizer® – to help those writing patents choose their words more wisely. He noted these tools can be used to flag prior usage of certain terms, identify on-point case references, suggest alternative terms for the patent application, alert you to terms or phrases that could be problematic in the courts and identify and rectify any claim anomalies.

Created by patent attorneys for patent attorneys, PatentOptimizer® patent drafting technology streamlines patent analysis and serves as a critical quality control check when drafting patent applications or dissecting issued patents.

“It’s almost hard to believe that PatentOptimizer can do all the things it can do,” he said. “If you’re interested, you should really get a test drive of the product.”