Patent Law Practice Center

Amici Argue For Supreme Court Review Of The Indefiniteness Test

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor)

Last Thursday, Mark Lemley and I filed an amicus brief urging the Court to take certiorari in Applera v Enzo Biochem for the purpose of reviewing the test for when a claim is indefinite under 35 USC 112, Para. 2.   The brief (which is available here) was signed by an array of innovative companies.

The Patent Act requires claims to be “distinct” and “particular” in terms of calling out the subject matter of the claimed invention.  The purpose of this requirement is – not surprisingly – to put the public on notice of what the claims do and do not cover.   See Hearing Components, Inc v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010) (“the purpose of the definiteness requirement is to ensure that ‘the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the scope of the patentee’s right to exclude.”).

In other words, the Patent Act requires claims to be definite precisely so that people reading the patent know what rights have been claimed by the patent owner and what rights are still available.  Permutit Co. v. Graver Co., 284 U.S. 52, 60 (1931) (“[t]he statute requires the patentee … to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.” ) (more…)