One way is to modify the functional language with structure that can perform the recited function. Another way is to invoke 35 U. Under section f , an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material or acts in support thereof, and shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
As is often the case with software-related claims, an issue can arise as to whether sufficient structure is present in the claim or in the specification, when section f is invoked, in order to satisfy the requirements of section b requiring clearly defined claim boundaries.
Defining the structure can be critical to setting clear claim boundaries Topic 1: Establishing Clear Boundaries for Claims That Use Functional Language 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. When means-plus-function style claiming under 35 U. In order to specify adequate structure and comply with 35 U. In general, are the requirements of 35 U. In particular: a Do supporting disclosures adequately define any structure corresponding to the claimed function? In software-related claims that do not invoke 35 U.
In particular: a Is it necessary for the claim element to also recite structure sufficiently specific for performing the function? Should claims that recite a computer for performing certain functions or configured to perform certain functions be treated as invoking 35 U.
Here's 35 U. They think software developers know what that is saying? I don't know from the words alone, and I'm a paralegal. Australia Pty Ltd. Int'l Game Tech. DirecTV Group, Inc. VIA Techs. That's how they explained it in But let's be real.
With the US Supreme Court and the Federal Circuit playing ping pong with where the line should be, nobody knows where it really is any more. You may have noticed that in the amicus briefs being filed in the CLS Bank v. Alice case, a case about when, if ever, software should be patentable being considered by the Federal Circuit.
Here's what I know, though. Just saying "with a computer" shouldn't be enough. Note that there is also a request for comments on what would be best practices when preparing patent applications as they relate to software. That's at the very end of the notice, Topic 3: Oral comments are requested on the advantages and disadvantages of applicants employing the following practices when preparing patent applications as they relate to software claims.
Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U. If you understand that, go for it. All I know is saying "with a computer" or "on a computer" should never be enough. And you should have to provide source code. No excuses. If the point is that the public is supposed to get something out of patent law beyond higher prices, and if it's supposed to be specific enough that someone skilled in the art can know how to duplicate it, surely source code is required.
Developers don't speak legalese. They speak code. So if they're supposed to understand and benefit, you need to speak their language. And if a company is too paranoid about its precious software secrets, then patents are not appropriate. Let them use trade secret protection, because otherwise the public is being robbed of its end of the patent law bargain.
Notice of meetings. Members of the public are invited to participate. The Software Partnership will be an opportunity to bring stakeholders together through a series of roundtable discussions to share ideas, feedback, experiences, and insights on software-related patents. To commence the Software Partnership and to provide increased opportunities for all to participate, the USPTO is sponsoring two roundtable events with identical agendas, one in Silicon Valley, and the other in New York City.
Each roundtable event will provide a forum for an informal and interactive discussion of topics relating to patents that are particularly relevant to the software community. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought. The afternoon program will run from pm — pm with discussion topics including USPTO initiatives, functional claiming, 35 U. The Software Partnership provides opportunities to bring stakeholders together to share ideas, experiences and insights and serves as a forum for an informal discussion of many topics specific to the software community.
This joint meeting will provide an opportunity to advance the conversation about improving examination of software related patents. Members of the public are invited to attend each session. Discussion of the program topics and additional ideas from the public will be solicited during the meeting.
While public attendees will be offered the opportunity to provide input, group consensus advice will not be sought. There is no cost to attend the meeting. While public attendees will be offered the opportunity to provide input, group consensus advice will not be sought. There is no cost to attend the meeting. The focus session will be held from am — am. The afternoon program will run from pm — pm and will be accessible via Webcast.
Check here for updates to this event. To register for attendance to the joint meeting of Partnering in Patents and the Software Partnership please complete the registration form at the link below.
Please indicate on your registration form whether you will participate in the morning focus session.
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