USPTO Will Continue To Apply Lower In Re Packard Indefiniteness Standard During Examination

The USPTO Patent Trial and Appeal Board announced that it will continue to reject claims as indefinite under 35 U.S.C. § 112(b) when they contain words or phrases whose meaning is "unclear," instead of applying the higher "reasonable clarity" standard established in Nautilus, Inc. v. Biosig Instruments, Inc. The Board noted that the lower standard better reflects the Office's role in ensuring that claims are clear during examination and the ability of applicants to amend pending claims to address clarity issues.

The USPTO Patent Trial and Appeal Board has designated the decision in In re McAward, No. 2015-006416 (Aug. 25, 2017) as "precedential" with respect to the appropriate standard for assessing whether claims are indefinite under 35 U.S.C. § 112(b) during patent examination. The PTAB ruled that the "reasonable clarity" standard articulated in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), will not be applied during examination. Instead,