TAKEAWAY: The USPTO is actively considering its indefiniteness standard for post-issuance proceedings.

The USPTO is evaluating its indefiniteness standard for post-grant proceedings. The USPTO recently cited reconsideration of its indefiniteness standard as its reason to exit Federal Circuit case, Tinnus Enterprises LLC v. Telebrands Corp. In a motion filed March 29 seeking to withdraw from the case, USPTO Solicitor Nathan K. Kelley stated, “because the PTAB’s approach to claim construction and indefiniteness during post-issuance proceedings under the America Invents Act is something the agency is actively considering, the Director has decided not to advocate for a particular approach in this appeal.”

The statement alludes to the current state, where the USPTO and the courts apply different standards of indefiniteness. The precedential PTAB Ex Parte McAward decision confirmed that the USPTO uses a lower threshold for indefiniteness than federal courts. By McAward, the USPTO expressly follows the In re Packard indefiniteness standard requiring claim terms to be “clear” during pre-issuance examination. Courts follow the Supreme Court’s more permissive Nautilus, Inc. v. Biosig Instruments, Inc. standard merely requiring claims to have “reasonable certainty.” Although McAward did not address post-issuance proceedings, the PTAB generally applies the Packard standard in post-issuance proceedings.

The statement by Solicitor Kelley may signal upcoming clarity on the appropriate indefiniteness standard of post-issuance proceedings. It is unclear as to whether the USPTO will also reconsider its indefiniteness standard in pre-issuance examination. It also remains to be seen whether the USPTO will resolve the lack of certainty of having different indefiniteness standards at the USPTO versus in court, or whether the USPTO will create more uncertainty by using different standards for pre- versus post- issuance.