However, means plus function claims are only valid if the specification describes some structure to carry out the proposed function. The federal circuit vacated and remanded the boards finding of obviousness of certain challenged claims based on a means plus function limitation, affirmed the boards finding of. These cases also demonstrate yet another weapon for invalidating functionally claimed software patents. Patent eligibility is not the only area in which the federal circuits rulings have impacted software patents.
Means plus function claims cannot, however, be the primary claims and for goodness sakes dont file patent applications with only means. Most software patent claims today are written in functional terms. Such meansplusfunction claim elements are now governed by 35 usc 112f. In patent claims, meansplusfunction limitations typically are written in the form means for followed by a function e. The federal circuit has now held that where a means limitation is associated with multiple functions, a claim is indefinite where the patent specification discloses only one of the functions. These cases also demonstrate yet another weapon for invalidating functionallyclaimed software patents. Functional language in apparatus claims in us patent. Jul 14, 2016 if you want written support and are preparing a pct application or u. Not all terms in a means plus function or step plus function.
For explanations about independent and dependent claims and about the different categories of claims, i. Jun 17, 2015 the challenged patent claims in this instance did not provide algorithms or the such in the specification to perform the functions of the limitation construed to be a means plus function claim, so the patent claims were held invalid as being indefinite. Meansplusfunction software claims indefinite where corresponding algorithm not disclosed. Software patents under united states patent law wikipedia. Although the language means for marking seems quite broad, over the past 25 years, courts have given these claims increasingly narrow scope. In particular, the functional limitations of a means plus function claim may be useful in prosecution to overcome prior art that may be similar but incapable of performing the claimed function. Cls bank, could face the additional challenge of being unexpectedly construed as meansplusfunction claims under 35 u. Inventors may claim their inventions functionally, but if they do, the claim will only be interpreted to cover the structure and reasonable equivalents described in the patent s text and drawings for performing that function.
Though limited in scope, including meansplusfunction claims as one of these formats could be a good fallback option for avoiding alice rejections. The presumption is overcome by also claiming structure that is sufficient to perform the claimed function. Examples of patent eligible claims for software inventions. Aristocrat case raises requirements for means plus function software patent claims. Lemley argues that courts could prevent overclaiming by software patentees, and solve much of the patent.
Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is any. Clarapombo patent protection latin america lp20161114. Means plus function claiming allows one to claim the invention based on functionality rather than claiming structure within the body of the claim itself. Therefore, if you file your software patent today, the law that the patent office will use to look at your application probably doesnt exist.
Summary of means plus function law in the federal circuit iv. This section requires that the claims of a patent must particularly point. This is a list of special types of claims that may be found in a patent or patent application. Functional claim language adapted to and configured. Dec 08, 2016 reciting means plus a function raises the presumption that 112f is invoked. Both cases followed the ever growing body of law on. If the patent is interpreted as a means plus function claim, it will be limited to the particular software implementation the patentee actually built or described. Means plus function claims recite function preformed by structures disclosed in the specification instead of specifically defined structures interpretation varies from jurisdiction to jurisdiction the means plus function clauses recited in the claim must be adequately described by the structure.
Patent attorneys should not rely on the general microprocessor exception as even the simplest control structures, such as an ifstatement, may cause the algorithm to fall outside of the very narrow general purpose computer exception. The question of determining the allowability of patent claims written in means plus function style, always posed difficulties in the examination in ipo. Although not the only way of doing so, means for is traditionally used by patent attorneys to invoke the doctrine known as means plus function claiming allowed under 35 u. Software patents and the return of functional claiming. At first, one might assume that a computer, a microprocessor, or the like constitutes structure corresponding to the claimed function. The court has also altered course in handing meansplus function claims in several recent cases including eon v. Means plus function clause functional equivalents 9. Means plus function claims must include a corresponding structure that performs the function and, if they do not, they are invalid as indefinite under section 1126 of the patent act. Simply by applying the rules of means plus function claims to software, we could begin to get a handle on the software patent issue. A proper functional limitation will be written in what is known as means plus function form, such as a means for marking.
When a claim limitation is deemed to invoke meansplusfunction. Means plus function language in a claim appears to be a broad form of claiming ones invention. Indeed, ending functional claiming may be the only way out of. June 16, 2015, raises the specter that software patent claims, already oftchallenged in the wake of alice corp. A primer on indefiniteness and means plus function. Means plus function claims dilemma and cri guidelines. A single means claim is a claim that recites a meansplusfunction limitation as the only limitation of a claim. These include virus detection software, web interfaces, contentfiltering software, video compression software, and more. This cle webinar will provide patent counsel with guidance on software patents and the issues of enablement, definiteness, means plus function and step plus function, on sale, and public use. Uspto issues new guidance on computerimplemented means.
Both because of the nature of computer programming and because of the. Software patent means claims held indefinite bejin bieneman plc. Because of these restrictions on meansplusfunction terms, professor mark lemley has suggested that courts begin to interpret software claim terms as being written in meansplusfunction format. Limitations in software related claims for definiteness under 35 u. Nov 14, 2016 readable claims means by function or results, any software claim2 computerreadable medium, computer programs3, and signal claims 1 regarding the means plus function claims, please be advised that sometimes the examiner indicates that functional features ar e allowed in order to. It is not known when the first modern meansplusfunction claim was patented. Using functional language to define the capabilities of structure.
A software patent means plus function claim is indefinite where the specification fails to disclose an algorithm that performs the recited function. Aristocrat case raises requirements for meansplusfunction software patent claims. Uspto to require means plus function claims for software. European patent convention this area contains legal texts from the epo, including the european patent convention, ancillary regulations to the epc, national law relating to. Uspto final examiner guidelines for means plus function claims 10. Citrix, the patent drafter was able to avoid a claim limitation from being inadvertently construed as a means plus function limitation. Rather, build your claim set using other techniques and then add some means plus function claims to ensure a jury trial.
That language allows a patentee claim various elements based on their function. Ptabs claim construction regarding meansplusfunction. 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. Nov 15, 2017 a primer on indefiniteness and means plus function. How structural claim limitations can save software patents. Indefinite claims can leave ipr petitioners emptyhanded. Jun 23, 2015 on june 16, 2015 the federal circuit decided en banc to overturn a panel decision of the federal circuit that held the term module in the context of a computer software patent did not invoke meansplusfunction claiming under 35 u. Why software patent owners should welcome a recent federal. Software means plus function claims indefinite for. It is not known when the first modern meansplusfunction claim was patented, but it. Federal circuit modifies meansplusfunction presumption. Do ensure proper 112 support for all meansplusfunction limitations. En banc federal circuit broadens what constitutes a means. By using our website you agree to our use of cookies as set out in our.
Apr 26, 2019 while patentability and indefiniteness are different concepts, if a software claim is functional enough to trigger consideration of applying a means plus function analysis, that can also be an. Include a flow chart andor description of the algorithm that is used to perform the function. Circuit for interpreted as meansplusfunction bejin. Having a claim interpreted to include meansplusfunction limitations is not necessarily a bad thing and can even be advantageous. May, 2015 software patents with means plus function claims must disclose algorithm read the computers and software legal blogs that have been posted by attorneys on. Only about 15% of the issued patent included at least one claim having an mpf limitation. The patent statute allows patentees to draft claims in more generic means plus function language. As such, it may be prudent to avoid language that implicates means plus function such as solely functional language and the operative trigger term means. Means plus function functional claim language at the precise point of novelty may render a patent invalid as indefinite.
The chart above shows the percentage of published nonprovisional patent applications that include the term means for at least once in the claimset. Software patents with meansplusfunction claims must. Because algorithms are inherently functional in nature, software patent claims are frequently written using functional, as opposed to structural. Enablement, definiteness, means plus function, step plus function, on sale, public use march 12, 2020 shu chen shu. For a computerimplemented means plus function claim limitation invoking 35 u. Even though means plus function claims are not as prevalent as they were at the turn of the century, patent applicants in the. However, congress by statute has limited the breadth of these types of limitations to those embodiments disclosed in the patent application which are linked to the means plus function limitation plus their equivalents. Strategies for patenting software based inventions in the u.
Software meansplusfunction claiming gordon feinblatt llc. The number and importance of software patents has exploded in recent years, particularly as they relate to mobile and web applications. Jan 01, 2015 in both ergo and noah, the outcome rested upon whether means plus function claims in a software patent were indefinite and, therefore, invalid. While doing so would narrow the scope of software patents, unfairly in a. In many cases, software claims recite vague sounding units or modules to carry out steps of the algorithm.
May 25, 2007 means plus function language in a claim appears to be a broad form of claiming ones invention. A claim with a means plus function limitation may invalidate the claim if the claim and the specification are not properly drafted. Functional language in apparatus claims in us patent practice. The 2014 guidance and july update are helpful for determining software invention patent eligibility, drafting software patent claims, and drafting responses to uspto 101 rejections. Thus, the means or step plus function claims must still be analyzed to determine whether there exists corresponding adequate support for such claim under 35 u. With software patents and meansplusfunction, structure. Doctrine of equivalents applied to means plus function claims 12. The rule used to be that using the term means would categorize a claim term as being a means plus function limitation. Consequently, software claims are often subject to the means plus function guidelines set forth in 35 u. On january 4, 2019, the united states patent and trademark office.
Mar 12, 2020 this cle webinar will provide patent counsel with guidance on software patents and the issues of enablement, definiteness, means plus function and step plus function, on sale, and public use. Reading through the tea leaves, the uspto appears quite interested in exploring means plus function claiming with the software community. Absence of the term means with functional language raises a rebuttable presumption that the claim element is not to be treated under 112f. Jan 07, 20 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. Although their language is broad and, if interpreted literally, could encompass any means for performing the claimed function, a meansplusfunction term is limited in scope by statute. Sep 25, 2012 treating these functional software patent claims as means plus function claims may end up saving them from invalidation under section 101. I used a software program to tally those patents that include claims with meansplusfunction mpf claim language by looking for the terms means for or means of in the claims. If claiming software in meansplusfunction form, the actual algorithm must be disclosed in the specification. Jan 31, 2018 these types of claims are different from traditional set of claims as they do not recite any structural features to carry out the invention. Although not the only way of doing so, means for is traditionally used by patent attorneys to invoke the doctrine known as meansplusfunction claiming allowed under 35 u. With software patents and meansplusfunction, structure mintz. Citrix online, llc, and lessons for patent drafting.
Means plus function claims cannot, however, be the primary claims and for goodness sakes dont file patent applications with only means plus function claims. Means by function or results, any software claim2 computerreadable medium, computer programs3, and signal claims 1 regarding the means plus function claims, please be advised that sometimes the examiner indicates that functional features ar e allowed in order to. Means plus function claims provide a more narrow scope of protection, but can be a worthwhile option in claim drafting. But claim of the 296 patent did not use the word means. The socalled interface was entirely a set of software instructions, claimed in means plus function form. Interpretation and infringement of meansplusfunction claims. In patent claims, means plus function limitations typically are written in the form means for followed by a function e. Use means plus function terms do use means plus function terms in your patents dont rely exclusively or predominantly on them.
Means plus function claiming allows one to claim the invention based. Interpretation and infringement of meansplusfunction. Patent lawyers may use this technique to try to get a very broad patent, but these patents are sometimes easier to invalidate. Means plus function software claims indefinite where corresponding algorithm not disclosed. Five general principles of method claiming julie r. During the prosecution of software patent applications, the two most common rejections are patent eligibility rejections under 35 u. Software patent experts we help our clients make stronger arguments in patent infringement cases. Software patent means claims held indefinite bejin. Meansplusfunction software claims indefinite where. In all likelihood this would severely limit the scope of many software related patents and would also lead many of them to be invalidated under mpfindefiniteness. Meansplusfunction patent claims cle webinar strafford.
The use of meansplusfunction claims in software one solution that patent lawyers sometimes use is to write claims using the meansplusfunction format. Means plus function without the means trigger oc patent lawyer. A method by computer for drafting a patent application having at least sections including claims, a summary of the invention, an abstract of the disclosure, and a detailed. Aristocrat case raises requirements for meansplusfunction. For the benefit of the reader, you can find a link to the examples provided in the july update at the bottom of this article. Apr 20, 2017 means plus function claims provide a more narrow scope of protection, but can be a worthwhile option in claim drafting. The federal circuits recent decision in aristocrat technologies will require software patent drafters to take. Written description focus on electricalmechanical and computersoftwarerelated claims. Software patent examples help people who invent software to know what types of software are patentable in the united states. Life360 asserted that the terms symbol generator and cpu software invoked means plus function language, but the patents failed to disclose adequate structure, making the claims. Functional language may also be employed to limit the claims without using the meansplusfunction format. Consequently, software claims are often subject to the meansplusfunction guidelines set forth in 35 u. For the other claims that actually used the word means, the parties agreed that a means plus function interpretation was appropriate and only disagreed over the scope of the specification providing the corresponding structure. Finally, in part iv, i argue that the problem could be solved simply by applying the rules of means.
An element in a patent claim may be expressed as a means or step for performing a specified function. Computer software patentability and the role of meansplus. A software patent meansplusfunction claim is indefinite where the specification fails to disclose an algorithm that performs the recited function. A primer on indefiniteness and means plus function ipwatchdog. Enablement, definiteness, means plus function, step plus function. Treating these functional software patent claims as means plus function claims may end up saving them from invalidation under section 101. The july 2015 update from the uspto has several examples that help define what works as a software patent. However, claims that recite such configured to or adapted to language have recently been construed by courts in a more limited manner similar to means plus function claim terms. Meansplusfunction claims, or functional claiming, is a drafting technique. Since a means plus function claim limitation is limited to the disclosed algorithm and equivalents, the patent applicant could point to the algorithm to argue that the generic means plus function. Although their language is broad and, if interpreted literally, could encompass any means for performing the claimed function, a means plus function term is limited in scope by statute. Functional claiming in software patents software patents are generally.
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