Peter S. Menell (University of California, Berkeley – School of Law) has posted Reinvigorating Patent Notice through Faithful Implementation of the Section 112(b) Claim Indefiniteness Provision on SSRN. Here is the abstract:
The innovation sector is awash with patents of uncertain scope, substantially raising the costs of competing, hampering cumulative innovation, and clogging the courts with needlessly complex litigation. The root cause of the problem is that the patent system rewards vague claiming of inventions in some technological fields. By obfuscating the scope of rights and keeping others in the dark about intellectual property rights afforded inventors, patentees can gain greater flexibility in targeting new ventures as well as an element of surprise in later asserting their rights.
The Patent Act insists that applicants “particularly point[] out and distinctly claim” their inventions. 35 U.S.C. § 112(b). Yet for informational, budgetary, and other institutional reasons, the Patent Office is ill-equipped to solve this problem on its own. Unless applicants have greater incentive to heed Section 112(b)’s requirement, vague claims will persist.
The Federal Circuit’s lax legal standard for invalidating patent claims for indefiniteness — holding that claims will be struck down only if they are not amenable to construction or are “insolubly ambiguous” — conflicts with Congress’s clear command and the Supreme Court’s venerable jurisprudence emphasizing the manifest justice and fairness of clear patent claims. Nautilus v. Biosig Instruments provides the Supreme Court with the opportunity to reinvigorate the patent system’s critical notice function.
A very interesting Amicus. For a different take on the role of vagueness in patent claims, see The Interpretation-Construction Distinction in Patent Law by T.J. Chiang and your blogger.