Ascertaining reasonable certainty for claim definiteness in US patents: An analytical framework.

The Claim definiteness requirement for patentability is spelt out in 35 U S C § 112 ¶b. Supreme Court in Nautilus v. Biosig (2014) opined that the claim is definite only when it serves public notice function rather than just be insolubly ambiguous. This investigation traces the evolution of claim definiteness standard since the inception of the patent law and presents summary of cases decided by the Courts. Our analysis of claim definiteness litigations shows that the claims in unpredictable arts are more likely to be challenged for definiteness than those in predictable arts. The analysis further reveals that the Supreme Court in its Nautilus decision, restored the claim definiteness standard consistent with that mandated by the statute. Based on analysis of case-law, we provide a framework for PHOSITA to ascertain the definiteness of a claim under reasonable certainty standard. Re-analysis of cases based on insolubly ambiguous and reasonable certainty standard respectively, showed that Court's decision would have differed in only 4 cases out of 17 cases decided. The paper also provides guidelines to draft claims which will survive Nautilus standard and identify claims which could be successfully challenged for indefiniteness. Overall it would help in enhancing patent quality. [ABSTRACT FROM AUTHOR]