In Ex Parte McAward, the Patent Trial and Appeal Board recently confirmed in a precedential opinion that the U.S. Patent and Trademark Office may use a fundamentally different definiteness standard than the standard used by the federal courts. In this case, the PTAB held that the USPTO’s definiteness standard requires greater certainty and less ambiguity compared to the Nautilus standard used in district court litigations. This decision confirms that the PTAB will continue to hold patent applications to a higher level of scrutiny relative to the district courts’ treatment of definiteness in issued patents. While the McAward decision is directed to preissuance examinations, its definiteness standard is also likely applicable to post-issuance PTAB proceedings.
*This article was first published in Law360.