6. Patent Claims and Process

Our primary focus in this class will be on the patent claim, which establishes the boundaries of the patent holder’s right to exclude. In connection with this discussion, we will look at two aspects of claiming: the process for obtaining a patent (typically referred to as “patent prosecution”) and the requirement of definiteness. We will discuss the interpretation of patent claims in this class.

A. The process of obtaining a patent

The process of obtaining a patent involves a series of interactions between the applicant (or more commonly, their attorney), and an examiner at the United States Patent and Trademark office (USPTO or PTO). This process is often referred to as “patent prosecution” (from the perspective of the applicant) or “patent examination” (from the perspective of the public). Patent prosecution begins when the applicant files their patent application with the PTO. This application is then assigned to an examiner, who assesses the patentability of the claims proposed by the applicant. If the applicant has not met one or more of the requirements of patentability, the examiner will issue an office action to which the applicant must respond with any amendments and/or comments addressing the examiner’s rejections. This process will continue until the application is allowed or the examiner issues a final office action.

An application will be allowed if the applicant has satisfied all of the patentability requirements, meaning the application can issue as a patent. If, on the other hand, the examiner issues a final office action rejecting the application, the applicant can either file a request for continued examination or appeal the final rejection to the Patent Trial and Appeal Board (PTAB). If the applicant files a request for continued examination, the process of examination and response continues again until the examiner finds the application allowable or issues another final office action.

There are also several post-issuances proceedings that can occur at the PTO. These include inter partes review (IPR), ex parte review, post-grant review (PGR), supplemental examination, and covered business methods review. Decisions in these proceedings are made by the PTAB, and all PTAB decisions are appealable to the United States Court of Appeals for the Federal Circuit.

B. The requirement of claim definiteness

Nautilus v. Biosig (2014) involves the issue of claim definiteness. Under 35 U.S.C. § 112(b), an application should include “one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention….” This text is generally referred to as the “claim definiteness” requirement.

Issues of definiteness can arise both in when interpreting the meaning of claims and when applying the claims. Problems with the application of the claim language include grammatical or word errors, terms of degree, open-ended ranges, subjective terms, and multiple methods of measuring.

Definiteness issues can also arise when the applicant uses functional language in the claims. Under 35 U.S.C. § 112(f), “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without recital of the structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” A means-plus-function claim is indefinite if the “means” are not properly described elsewhere in the specification.