James Kelly Attends Biotechnology, Chemical and Pharmaceutical Partnership Meeting

Washington, D.C. | November 2017James (Jim) Kelly attended a meeting of the Biotechnology, Chemical and Pharmaceutical Partnership (the Partnership) at the main campus of the U.S. Patent and Trademark Office (PTO) in Alexandria, Virginia on Monday, November 6, 2017.

Sponsored by the PTO, The Partnership serves as an informal conduit for patent practitioners and PTO officials to share insights and experiences in order to improve patent prosecution in the biotechnology, chemical and pharmaceutical spaces. Jim participated in a panel discussion on the role of 35 U.S.C. § 112(b) during proceedings at the PTO.

35 U.S.C. § 112(b) (formerly 35 U.S.C. § 112, second paragraph) requires that a patent contain one or more claims “particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention,” which is often referred to as the “definiteness requirement.” In the Nautilus, Inc. v. Biosig Instruments, Inc. (134 S.Ct. 2120 (2014)), the Supreme Court held that patent claims are invalid for indefiniteness when the claims “fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention,” when the claims are read in light of the specification and the prosecution history of the patent.

However, the PTO’s Patent Trial and Appeal Board (the Board) has subsequently held that the standard articulated in Nautilus does not apply during ex parte examination (see Ex parte McAward) or in post-grant review proceedings (see Telebrands v. Tinnus) at the PTO. Rather, in those proceedings, the Board held that “a claim is indefinite when it contains words or phrases whose meaning is unclear” as set forth by the Federal Circuit in In re Packard.

It was clear from the panel discussion that these differing standards for claim clarity can cause confusion during the examination process at the PTO in that an Examiner may apply an incorrect legal standard when reviewing the claims of a patent application. Jim reports that the PTO officials attending the Partnership meeting were nearly unanimous in suggesting that practitioners have interviews with Examiners early in prosecution in order to resolve issues related to claim clarity.

With an office in Washington, D.C., RatnerPrestia is committed to maintain a close working relationship with the PTO by attending Partnership meetings and other PTO outreach initiatives as well as by conducting interviews with Examiners, in order to obtain intellectual property rights for our clients.

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