In a memo issued on January 6, 2021, the U.S. Patent and Trademark Office (USPTO) told the Patent Trial and Appeal Board (PTAB) they must use the Nautilus standard for addressing indefiniteness, which was set by the Supreme Court of the United States in 2014. Previously, the PTAB used the In re Packard approach to indefiniteness in America Invents Act (AIA) reviews. Law360 interviewed Finnegan partner Josh Goldberg for his insight on the USPTO’s memo.
In theory, a claim is easier to invalidate under Packard than under Nautilus, but Josh said that is not always the case in practice. He said, “At the margins, there may be cases where the difference in standard potentially has an impact, but I think for the vast majority of cases ... this is really just going to be a simplification of the briefing since everyone now knows what the correct standard is.”
Read the full article here.
Media Mention
Women in Business Law Americas Awards 2024: Three Finnegan Attorneys Shortlisted
April 7, 2024
Award/Ranking
Managing IP Americas Awards 2024: Finnegan Shortlisted for Nine Awards, Including Firm of the Year
March 12, 2024
Commentary
February 29, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.