A driving motivation for patent reform legislation in the 2015 Congress is the assertion that patents exist with ambiguous claims that make it possible to assert the patent in unexpected ways. Is the concern real? Section 112 of the Patent Act, the 2014 Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., coupled with the USPTO guidelines for examination under Section 112(b) make such concerns unwarranted.
Justice Ginsburg’s unanimous decision in Nautilus is a good place to start. It was true, as Justice Ginsburg points out, that “patent applicants face powerful incentives to inject ambiguity into their claims.” But, it is clear that the goal of that decision was “eliminating that temptation,” and that is precisely what it does.
Section 112 has long provided that the claims must point out and distinctly claim the subject matter which the applicant regards as his invention. (originally 35 U.S.C. § 112, ¶2, and now codified at 35 U.S.C. § 112(b) (2012)). Nautilus requires that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”
The USPTO views Section 112(b) as setting forth two separate requirements for claims:
1) The claims must set forth the subject matter that applicants regard as their invention, and
2) The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent grant.
The USPTO will ask whether one skilled in the art would understand the metes and bounds of the claim when read in light of the specification; the USPTO examiner will give the claims the broadest reasonable interpretation consistent with the specification.
Since claims are to be interpreted in light of the specification the inventor remains his own lexicographer, but in that case it is important that the specification state the meaning that a term in the claims is intended to have. Words of a claim will be given their plain meaning unless the plain meaning is inconsistent with the specification. See MPEP §§2111.01 and 2173.05(a). Some guidance may be taken from the Glossary Pilot Program, and if a Glossary is included in the patent:
1) The glossary should be placed at the beginning of the detailed description portion of the original specification, identified with a heading, and presented on filing the application. The glossary cannot be, for example, a separate paper, an appendix to the specification, or part of an information disclosure statement. Additionally, the glossary cannot be a follow-on submission made after the filing date of the application.
2) The glossary definitions should not rely upon other parts of the specification for completeness, or upon any incorporation by reference to other sources such as patents, published patent applications, or non-patent literature references.
3) A glossary definition establishes scope for a term by presenting a positive statement of what the term means. A glossary definition should not consist solely of a statement of what the term does not mean, and should not be open-ended.
4) Definitions provided in a glossary should not be disavowed elsewhere in the application. For example, a definition cannot be presented in the glossary along with a sentence that states that the definition is not to be considered limiting.
5) A glossary definition may include the usage of examples, synonyms, and exclusions. However, the glossary definition should not consist solely of a list of examples, synonyms, or exclusions.