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After Nautilus

The Tension Between the Inherent Lack of Clarity of Language and Notice Function of Patent Law

By Bruce M. Wexler, James T. Evans, Scott F. Peachman, and Yousef M. Mian

©2017. Published in Landslide, Vol. 9, No. 4, March/April 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Patent law demands that an invention be new and nonobvious to merit the award of temporary exclusivity. But even a patent for a new and nonobvious invention can be invalid if the patentee fails to describe and claim the invention following technical requirements of the patent law. This requirement can be rife with pitfalls, given the inherent ambiguity of language. A recent Supreme Court case, Nautilus, Inc. v. Biosig Instruments, Inc.,1 has increased exposure of patentees to attacks on their choice of language in their patents, and makes patentees further think carefully about how they phrase their claimed invention. This article explains Nautilus and the competing policies recognized in that decision, and explores the evolving legal and litigation landscape so that practitioners and patentees can avoid unintended problems that might render a patent on an otherwise meritorious invention invalid.

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