Limitations on Functional Claiming: One Part Of The Solution Section 112(f) should be enforced more broadly and more rigorously than it is today. The problems associated with functional claiming are well established. As the courts have recognized repeatedly in cases dating back to the dawn of the Industrial Revolution, pure functional claiming can undermine the critical notice function of patents, presents increased risk of ambiguity in the meaning of claims, and has often been employed as a means to expand claim scope far beyond what the applicant actually invented. These concerns were summarized by the Supreme Court in their Halliburton opinion which described “the broadness, ambiguity, and overhanging threat of the functional claim” at issue in that case. However, addressing this problem is no simple task and will require changes to Federal Circuit case law. But Solution Must Be Technology-Neutral Problem of functional claiming extends beyond software. Technology-specific rules are inconsistent with a unitary patent system and should be avoided due to risk of discrimination based on field of technology. Effective Solution Must Also Address Notice and Breadth Issues More rigorous application of Section 112(f) would be helpful, but is insufficient to fully address problems of inadequate notice and excessive breadth. Such efforts should be coupled with stronger enforcement of the definiteness, written description, and enablement requirements.

Section 112(b) Definiteness: In addition to considering the broadest reasonable interpretation, USPTO should focus attention on whether a claim is susceptible to multiple interpretations and issue a rejection in cases where there are. Standardized Nomenclature: Developing a standard language for describing software inventions would help address some of the linguistic ambiguity that is often found in software-related patents. USPTO’s suggestion relating to adoption of common notation systems to disclose algorithms is a good start and warrants serious consideration. Defining Claim Terms: As the USPTO notes in its Request for Comments on Preparation of Patent Applications, the specification is often the best source for determining the meaning of a claim terms. The USPTO should be more active in requiring applicants who use ambiguous claim terms to “act as their own lexicographers” by defining such terms clearly in the specification. Enablement & Written Description: Subsections 112(a) & (b) provide the appropriate tools for addressing scope and clarity. Functional claims that are not cabined by structural limitations should be more consistently rejected for failure to enable the full scope of the claim. Similarly, where the scope of claims exceed that of the description, they should be rejected for insufficient written description.

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