Well, the CAFC seems to think so; in January of this year, in the Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1663 (Fed. Cir. 2008) decision, they said:
"When a claim limitation is defined in purely functional terms, the task of determining whether that limitation is sufficiently definite is a difficult one that is highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area). We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation."
The PTO might think so, too. They issued a couple of memos to examiners on September 2nd in response to the CAFC decision.
[I assume that these memos are on the USPTO web site, but I couldn't find them.]
The memos are "a clarification regarding indefiniteness rejections under 35 U.S.C. 112 second paragraph". They are designed to "remind the examining corps of the appropriate use of indefiniteness rejections under 35 U.S.C. 112, second paragraph", both in general and when examining means-plus-function claims.
They address, among other things, rejections when a claim term lacks a clear and precise definition, and when a claim limitation lacks proper antecedent basis.
The memos really only restate the MPEP's guidance on 112 second, but they do indeed serve as reminders to examiners of the importance of making sure claims are sufficiently definite.
James Bessen and Michael J. Meurer also think too many indefinite patents are issued. In their book, Patent Failure, they argue that the root of the current problems with the patent system can be traced to a lack of notice, and that in particular the very nature of software and business method patents makes them inherently less definite, relative to other types of patents.
The notice function, of course, is supposed to inform the public as to the scope of patent protection. It ideally allows the public to discern the boundaries of what has been patented, so that they can avoid infringing, in the same way that a fence allows one to discern the boundaries of private property and so can easily avoid trespassing. The authors' point is that it is the lack of those clear boundaries of intellectual property that causes problems.
A bit of their analysis:
Features that affect the notice function of patents include:
- Fuzzy or unpredictable boundaries (because there is no reliable way of determining patent boundaries short of litigation).
- Public access to boundary information (because it is possible for patent owners to hide the claim language that defines patent boundaries from public view for many years).
- Possession and the scope of rights (because courts sometimes grant patent owners rights to technology that is new, different, and distant from anything they actually made or possessed).
- The patent flood (because investments in new technology often need to be checked against many patents - even thousands, in the case of e-commerce).
So, what can be done about it? They suggest (among other things):
- Reform the process of generating claims and litigating infringement by having the CAFC show more deference to the claim construction of the USPTO and the district courts.
- Implement a single specialized federal trial court to handle all patent lawsuits.
- Have examiners ask for more information about the meaning of claims and reject vague and abstract claims more aggressively.
- Allow the USPTO to offer opinion letters addressing whether a particular technology infringes a U.S. Patent, and have the courts give those opinion letters some deference.
- Require the USPTO to not only make pre-grant publication mandatory, but to require publication of every new or amended claim in every patent.
- Treat software as an "unpredictable" technology, thus limiting claims more closely to the technology actually disclosed.
[This, of course, leaves aside the problem of setting guidelines for what constitutes a 'software patent'.]
- Increase filing and renewal fees to decrease the number of patent applications filed and maintained in force.
- Strengthen obviousness standards.
- Reform patent law by simply excusing good-faith infringers, or expand the current prior-user defense to cover all computer and electronics inventions.
The authors really do make some pretty compelling arguments, at least to somebody with some one-sided knowledge of patent prosecution, but pretty much no first hand knowledge of patent litigation. I'm kind of surprised that I haven't seen more buzz about this book, but maybe I haven't been looking in the right places, and admittedly, I had this book sitting on my bookshelf for a few months before I got around to reading it.
I can appreciate their arguments regarding the difficulties of interpreting claim scope. It is not uncommon to examine applications that are written in a way that requires a fair bit of deciphering in order to get a good understanding of what the inventor is trying to patent.
And that's just the American inventors; foreign inventors are often far worse, because of the common practice of running a machine translation on a foreign language specification and submitting it to the Office as is. I hate picking up a new application which claims foreign priority, because I know that there is a good chance that I'm going to have to spend an inordinate amount of time just to figure out what the heck is going on.
In a perfect world, all the specifications would be crystal clear, and all the claims definite and enabled (and patentable, of course; lots of counts that way).
In our world, though, well, there is always the 112 rejection...