Functional Claim Drafting Practices Considered by USPTO

Despite public misconceptions to the contrary, software is not patentable. Of course, aspects of software, or “software related” patents exist in which an otherwise statutory apparatus or product is claimed that includes computer implemented functionality. In an effort to enhance the “quality” of these software related patents, the USPTO issued a notice last Thursday in the Federal Register entitled: Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software Related Patents.

The Notice “sets forth several topics to begin the Software Partnership discussion. The first topic relates to how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language.”

Reading through the tea leaves, the USPTO appears quite interested in exploring means-plus-function claiming with the software community. Since this style of claiming directly links the disclosed structure of the patent specification (algorithmic in the case of computer implemented features), it may be that the Office is proposing to rein in the scope of software claims by requiring the more narrow claim type. Thus, the “enhancement in quality” may result in future software related patents becoming more difficult to assert based on their narrower scope. To this end, the USPTO proposed the following talking points for the upcoming roundtable:

The USPTO seeks comments on how to more effectively ensure that the boundaries of a claim are clear so that the public can understand what subject matter is protected by the patent claim and the patent examiner can identify and apply the most pertinent prior art. Specifically, comments are sought on the following questions. It is requested that, where possible, specific claim examples and supporting disclosure be provided to illustrate the points made.

1. When means-plus-function style claiming under 35 U.S.C. 112(f) is used in software-related claims, indefinite claims can be divided into two distinct groups: claims where the specification discloses no corresponding structure; and claims where the specification discloses structure but that structure is inadequate. In order to specify adequate structure and comply with 35 U.S.C. 112(b), an algorithm must be expressed in sufficient detail to provide means to accomplish the claimed function. In general, are the requirements of 35 U.S.C. 112(b) for providing corresponding structure to perform the claimed function typically being complied with by applicants and are such requirements being applied properly during examination? In particular:

(a) Do supporting disclosures adequately define any structure corresponding to the claimed function?

(b) If some structure is provided, what should constitute sufficient ‘structural’ support?

(c) What level of detail of algorithm should be required to meet the sufficient structure requirement?

2. In software-related claims that do not invoke 35 U.S.C. 112(f) but do recite functional language, what would constitute sufficient definiteness under 35 U.S.C. 112(b) in order for the claim boundaries to be clear? In particular:

(a) Is it necessary for the claim element to also recite structure sufficiently specific for performing the function?

(b) If not, what structural disclosure is necessary in the specification to clearly link that structure to the recited function and to ensure that the bounds of the invention are sufficiently demarcated?

3. Should claims that recite a computer for performing certain functions or configured to perform certain functions be treated as invoking 35 U.S.C. 112(f) although the elements are not set forth in conventional means-plus- function format?

The Software Partnership roundtable events are scheduled for February 27th in New York City, and February 12th in Silicon Valley. Written comments will be accepted until March 15th 2013.