United States: INSIGHT: Stabilizing The Software Patent Field

Last Updated: June 7 2019
Article by Michael Kahn and Andrew Schreiber

Originally published in Boomberg Law, May 23, 2019

Section 112(f) of the U.S. Patent Act allows patentees to claim their invention as a means for performing a certain function—a method commonly employed by inventors in the software space. In Part 2 of a two-part series on new guidance from the United States Patent and Trademark Office (USPTO), Akin Gump attorneys share practice tips and say the guidance gives practitioners the tools to prosecute and enforce valid software patents.

In 2011, Marc Andreessen, serial entrepreneur and venture capitalist, boldly declared that "software is eating the world," as evidenced by the rise of computer-implemented technology powering global innovation.

Inventors have responded to this technological sea-change by seeking patent protection on innovative software—i.e., code which instructs a computer how to run and solve discrete problems. However, the unique, instructive nature of software runs up against a basic tenet of patent law that disallows functional claiming—when a claim is directed toward the function, solution, or outcome it performs.

Considering these concerns, on January 7, the USPTO issued Functional Claiming Guidance to the examiner corps and Patent Trial and Appeal Board (PTAB), for examining computer-implemented functional claim limitations under Section 112. This guidance accompanied updated Section 101 eligibility guidance, issued contemporaneously by the USPTO. (See related article)

Section 112 Guidance—Focus on Substance, Not Form

The guidance opens with an assessment of Section 112(f) (means-plus-function), which requires the disclosure of structures for performing any claimed function and is a statutory barrier to prevent purely functional claiming. Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).

This guidance follows the Federal Circuit's en banc decision in Williamson v. Citrix, which overruled the strong presumption that claims lacking the word "means" should not be considered under Section 112(f). 792 F.3d 1339 (Fed. Cir. 2015) (en banc).

Specifically, the USPTO emphasizes the Federal Circuit's holding that the standard to determine the applicability of Section 112(f) is "whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Id. at 1349.

In effect, the Functional Claiming Guidance aims to halt efforts to use claim drafting to get around Section 112(f). Regardless of whether "means," "step," or some other generic placeholder is recited in the claims, the guidance clarifies that patent examiners—or challengers arguing that Section 112(f) should apply—should analyze the three prongs set forth in the Manual of Patent Examining Procedure (MPEP) § 2181:

  1. Determine whether the claim recites "means," "step," or a generic term like "mechanism," or "system;"
  2. If so, assess whether that term is modified by functional language, typically connected to a transition word like "for," or "so that"; and
  3. If so, evaluate whether that term is further modified by sufficient structure, material, or acts for performing that function.

The third part of the inquiry, whether sufficient structure is recited in the claims, is informed by the specification as well as extrinsic evidence to help understand the modifying claim terms and whether a person having ordinary skill in the art would understand such terms to recite structure.

For example, examiners may assess whether:

  • the patent specification contains a sufficient description of the recited term to inform an individual of ordinary skill in the art that the term has structure;
  • technical dictionaries demonstrate the term is recognized as a noun denoting structure; and
  • prior art shows the term has a recognized structure to perform the claimed function.

In sum, the guidance refocuses the Section 112(f) application inquiry on whether a claim limitation is more aligned with a particular function or a defined structure, rather than a patentee's drafting efforts.

In addition, the Functional Claiming Guidance reinforces and summarizes what constitutes sufficient structure for computer-implemented claims assessed under Section 112(f); the specification must disclose an algorithm for performing the claimed function—in a formula, flowchart, or prose—to avoid indefiniteness under Section 112(b).

The guidance cites a technical dictionary that defines an algorithm as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Rather than detail a general-purpose computer, the corresponding structure to the claim should be a specific-purpose computer programmed to perform each step of the algorithm necessary to achieve the claimed function.

The guidance also outlines disclosure in the Section 112(a) context. By disclosing an algorithm, the inventor also satisfies the written description requirement. Spelling out an algorithm in most cases, rather than stating a program could hypothetically be coded, would describe the claimed invention in sufficient detail to demonstrate possession.

Pitfalls & Practice Tips

This instructive guidance fits into the recent, broader USPTO effort to achieve consistency in application of the Patent Act and across disparate technology fields. Most recently, this trend has been evidenced by the USPTO's rule standardizing claim construction standards between the PTAB and federal courts, and the concurrently issued Section 101 eligibility guidance.

With this guidance, the USPTO is giving practitioners the tools to prosecute and enforce valid software patents; inventors should make sure to provide sufficient structure for computer-implemented means-plus-function claims, including algorithmic support.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Banner & Witcoff
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Banner & Witcoff
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions