• Home
  • About Me
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent Prosecution Services
    • Patent Defense Services
    • Patent Enforcement Services
    • Trademark Search Services
    • Trademark Prosecution Services
    • Trademark Enforcement Services
    • Trademark Defense Services
    • Patent and Trademark Licensing Services
    • Worldwide Patent and Trademark Services
  • Learning Resources
    • Invention Agreements
      • What is an NDA and when to use them?
      • How to use a contract to protect your invention?
      • Working with others without losing your IP rights
      • Patent Assignments for Independent Contractors
      • Losing Invention Rights When Hiring or Collaborating with Others
      • Avoid Problems: Get an Invention Assignment Agreement
    • Protect Inventions
      • Do you need to get your patent attorney to sign an NDA?
      • Patent protection benefits and why every inventor should consider getting one
      • Reasons to only market your invention after securing patent pendency
      • 8 tips to successfully protect your idea
      • Four types of intellectual property you can use to protect your idea and how to use them
      • Can a confidentiality agreement protect me like a patent application?
      • Dangers of 1 yr grace period under first-inventor-to-file system
      • File a patent application before telling others about the invention
      • Risks and benefits of securing software patent protection
      • Strategy to overcome patentable subject matter rejection
      • Best uses for design patents
      • Overview of Patents and Intellectual Property
      • Pros and cons of filing a continuation-in-part application
      • Benefits of Patent Protection
      • Continuation patent application and related divisional and continuation in part
      • Misconceptions of Provisional Patent Applications
    • How Patent Applications Work: the Basics
      • How to respond to an office action?
      • Request for non-publication of a patent application
      • Anatomy of a Patent Document
      • How to write a broad patent application?
      • Design patents: pros and cons
    • Patent process
      • Overview of the examination process within the USPTO
      • What is a patent search and How to do it?
      • Patent attorneys, agents and the USPTO can help with the patent process
      • Highs and lows of securing patent protection for your invention
      • Patent Process: Invention to Patent Granted (Comprehensive)
      • Benefits of a Patent Search
      • Overview of Patent Process
      • Patent process timeline and major milestones
      • Patent process, overall steps and procedures
      • What is the Patent Office procedure after filing a patent application?
      • USPTO Website
    • Patent costs
      • How much does it cost to get a utility patent?
      • Provisional Patent Application: Cheap Alternative?
      • Patent Cost Framework and cash flow
      • Provisional patent application: a cheap option?
      • Cheap provisional patent applications
    • Worldwide patents
      • Pros and cons of securing worldwide patent protection and their steps
      • Foreign patent filing to secure protection in other countries
    • Responding to Office Actions
      • Overview of Office Actions
    • Patent infringement
      • Basics of writing a patent claim for a patent application
      • What are the patent marking requirements and its benefits?
      • Avoiding Patent Infringement
      • Can I Copy My Competitor’s Product?
      • Can I Copy My Competitor’s Product? (Design Patent)
    • Trademarks
      • Trademark Registration: common law, state and federal
      • How to obtain a federal trademark registration?
      • How to select a trademark?
        • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Patent Attorney | Orange County | OC Patent Lawyer

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Patent application process / Courts encourage clarity at USPTO to combat patent trolls

Courts encourage clarity at USPTO to combat patent trolls

August 28, 2014 by James Yang

ClearPatentClaims

Recently, there has been a push for clarity in patents because non-practicing entities and patent trolls have been accused of taking patents with ambiguous claim terms and construing those ambiguous terms to cover things beyond what is disclosed in the patent.  Since patent litigation costs are very high and even prohibitive, many businesses would rather settle than fight. The victims of such lawsuits say such tactics are unfair, while the patent owners say their actions are authorized by law and thus cannot be unfair. The following case illustrates an example of how the courts and Patent Office are encouraging patent applicants to refine the clarity of the claims and the scope of patent protection afforded under a patent at the examination stage which has the effect of reducing enforcement of dubious patents with ambiguous claims at the litigation stage.

In In re Packard (Fed. Cir. 2014), the examiner rejected the language of newly added claims for a coin holder as indefinite and the Patent Trial and Appeal Board had affirmed that rejection for indefiniteness.  The Applicant argued that the claims were not indefinite and brought the case up for appeal.  The patent Applicant argued on appeal that unless the claims were insolubly ambiguous they should not be rejected as indefinite.

The Appellate Court affirmed the Examiner’s and the Board’s decision that the claims were indefinite.  The Appellate Court reasoned that since the Examiner provided an explanation as to why the language was unclear, the applicant should have taken the opportunity amend the claims to address the Examiner’s concerns.  The standard by which the claims are determined to be sufficiently clear or unclear before the USPTO is much higher compared to when the claims are presented during litigation because the claims are not presumed valid during litigation, but are presumed to be both valid and not indefinite during litigation.  Moreover, during the examination stage, the Applicant has an opportunity to amend the claims to bring clarity to the claim language but the right to change the claim language is not available during litigation.

For these reasons, the court held that “when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of §112(b) [for indefiniteness].  A satisfactory response by the Applicant to an indefiniteness rejection can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or in the appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.”

In my opinion, the Court in many respects is giving great deference to the USPTO in that as long as the reasons for the indefiniteness rejection are well grounded, the determination of the patent examiner will be affirmed.  This forces patent Applicants and would be non practicing entities and patent trolls to work out the clarity of the claims at the examination stage and further facilitates a reduction in the perceived problems of non-practicing entities and patent trolls.

It will be hard to overturn the Examiner’s determination of indefiniteness.  As such, as a general rule, unless there is good reason to do so, patent applicants are likely to amend the claims to address the Examiner’s concerns and thus avoid the expense, delay and rejection that are likely to arise if they appeal the decision of the Examiner on indefiniteness.  Thus, in most instances, it will be preferable to work with the Examiner instead of appealing the Examiner’s decision on indefiniteness.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Lawyer, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

  • Facebook
  • Twitter
  • LinkedIn

Filed Under: Patent application process, Patent Infringement Tagged With: Indefiniteness, Non-Practicing Entity

Author: James Yang

Helping entrepreneurs and mid-size businesses since 2004. Call me at (949) 433-0900 to schedule your free initial consultation. Read More…

Professional Profile

James Yang Business Patent Attorney

James Yang, Patent Attorney

James Yang is a patent attorney whose practice encompasses all area of intellectual law including patents, trademarks, copyrights and trade secrets. Professional Profile

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?

New Book Release

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

Peer Recognition

top attorney patent application
client choice patent application
Rated by Super Lawyers
AV Preeminent rating

RECEIVE PATENT UPDATES

Stay up to date on major changes and get tips on patent prosecution.

We respect your privacy.

Popular Posts

    Patent process overview
    Patent process explained
    How much does a patent cost?

Services

  • Patent Prosecution Services
    Patent Defense Services
    Trademark Prosecution Services
    See All Services

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete terms of use

ATTORNEY ADVERTISEMENT

© 2019 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney