Dennis Crouch's Patently-O: Duty of Candor and Indefinite Claims

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Duty of Candor and Indefinite Claims Posted: 25 Mar 2015 01:31 PM PDT The Patent Act requires that patent claims be clear and distinct. 35 U.S.C. 112(b)(“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”).  Ambiguity is important because it can fundamentally smudge patent scope and resulting enforceability.  As a friend recently commented to me – that ambiguity fuels conflict and (in my view) helps spoil the market for patents. The rule of definiteness is designed to put the world on notice of the scope of the exclusive patent right. Unduly ambiguous claims are not patentable and – if patented – are invalid.  As the Supreme Court recently held, the scope must be “reasonably certain” to one of skill in the art. Nautilus (2014).  Although not requiring absolute certainty, reasonable certainty remains a high standard that has been thought of as a civil equivalent of the beyond-a-reasonable-doubt standard used in criminal cases and is the same standard used to prove lost-profits damages. Applicant Responsibilities: The Examiner is the first adjudicator of indefiniteness, but it is applicants who draft and amend patent claims.  The patent system creates some incentive for applicants seek some claims that are ambiguous (with other claims being more well defined).  However rather than addressing that partial incentive for ambiguity, I wanted to think for a moment about the applicant’s requirement under the law. The Duty of Candor & Good Faith Dealing is a fundamental aspect of the patent prosecution system.  Rule 56 includes: Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. 37 C.F.R. § 1.56. Although patent attorneys (and agents) have a duty of zealous advocacy for their clients (37 C.F.R. § 10.84), the duty of candor and good faith dealing is significantly raised in the ex parte patent prosecution process in comparison with traditional adversarial proceedings such as litigation. It seems to me that the duty of candor would kick-in if the applicant knew a claim term to be unduly ambiguous (scope not reasonably certain).  The bigger question involves other what-ifs: What if the applicant knows of that a term has multiple definitions that leave the term potentially indefinite; and what if the applicant knows that a term is not well defined in the art?

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