IP Alerts
April 10, 2024
On March 18, the USPTO issued a guidance document on how to examine claims that recite functional limitations without necessarily using the term “means” under 35 U.S.C. § 112. The guidance document aims to improve clarity, consistency, and predictability of examination under § 112 for different technology areas.
The guidelines explain how to determine whether § 112(f) applies using a three-prong analysis based on the presence or absence of the term “means,” the recitation of sufficient structure, and the recitation of a specific function. The guidance document also provides examples of sufficient structure and specific function for different types of computer-implemented inventions, such as software, algorithms, databases, and graphical user interfaces. The document notes that a generic computer component, such as a processor, memory, or display, does not necessarily provide sufficient structure for a specific computer function, unless the specification clearly links or associates the function and the component.
The guidance document provides further guidance on evaluating whether § 112(b) definiteness is met by identifying the corresponding structure, material, or acts in the specification that perform the claimed function and determining whether they are adequate to support the full scope of the claimed function. Examples are provided of corresponding structure, material, or acts for different types of computer-implemented functional claim limitations, such as software modules, algorithms, data structures, and graphical elements. The guidance document explains how to assess the adequacy of the corresponding structure, material, or acts by considering the level of detail, the use of generic terms or overly broad language, and the consistency with the enablement requirement of § 112(a).
The guidance document is not represented as changing current practice. That said, the author suspects that the issuance of this guidance heralds an intention to review patent applications more rigorously in these regards.
For more information on the revised guidelines, please contact Fitch Even partner Steven G. Parmelee, author of this alert.
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