Written by: Sunjeev S. Sikand
This article first appeared in the May 29, 2019 edition of the Legal Intelligencer.
On Jan. 7, 2019, the Patent Office issued further guidance on the application of 35 U.S.C. § 112 during examination of computer-implemented functional claim limitations (112 Guidance). 84 Fed. Reg. 57. At the same time, the Patent Office set forth a “practical application” test that relaxes the subject matter eligibility requirement of 35 U.S.C. § 101 (101 Guidance). 84 Fed. Reg. 50. While subject matter eligibility has been routinely utilized within the past decade by the examining corps to reject patent applications, the 112 Guidance issued in tandem with the 101 Guidance signals a shift in emphasis.
By way of background, the Patent Office states: “Problems with functional claiming, i.e., when a claim is purely functional in nature rather than reciting with any specificity how the claimed function is achieved, can be effectively addressed using long-standing, well-understood principles under 35 U.S.C. 112.” 84 Fed. Reg. 58. The first part of the 112 Guidance covers: (i) invocation of means-plus-function claim interpretation under 35 U.SC § 112(f); and (ii) indefiniteness of claimed functions under 35 U.S.C. § 112(b). The second part of the 112 Guidance covers: (i) written description support of the claimed functions by algorithms under 35 U.S.C. § 112(a); and (ii) enablement of the claimed functions under 35 U.S.C. § 112(a). This aligns the examining corps in the direction of the courts which, in recent years, have heightened the requirements under § 112 for computer-implemented functions.
Overall, the 112 Guidance counterbalances a lower standard for subject matter eligibility under the “practical application” test of the 101 Guidance with elevated § 112 examination scrutiny. As of May 10, 2019, 18 public comments were received in response to the 112 Guidance. Meanwhile, over 2,000 public comments were received in response to the 101 Guidance demonstrating the historically controversial nature of subject matter eligibility.
Generally, stakeholders in favor of the steps taken by the Patent Office in the 101 Guidance and the 112 Guidance argue that the overall approach provides greater predictability in patentability of inventions involving computer-implemented functions and ensures that examination of computer-implemented claims will more closely parallel the requirements set forth in § 112. Stakeholders opposing the steps taken by the Patent Office, such as the Electronic Frontier Foundation (EFF), argue that the 101 Guidance is “inconsistent with Alice and would lead to a renewed flood of bogus patents.” See “Call to Action: Tell the Patent Office Not to Reopen the Software Patent Floodgates” (Feb. 6, 2019). EFF, however, does not appear to oppose the 112 Guidance.
There is room for improvement in the 112 Guidance. In its public comments, the Intellectual Property Owners Association (IPO), observed that “the USPTO could create a set of examples specific to claim interpretation, indefiniteness, written description, and enablement” and “[f]or simplicity, the USPTO might repurpose some of the examples used in the Section 101 Subject Matter Eligibility Guidance.” IPO 112 Guidance Cmts. at 6. The American Intellectual Property Law Association (AIPLA) issued public comments agreeing with the IPO that training materials are needed. AIPLA 112 Guidance Cmts. at 2. IPO further noted that if an examiner cannot make a determination whether a claim term is properly interpreted by applying § 112(f) or plain meaning conclusively, this could have some bearing on an indefiniteness analysis, but the examiner should still state on the record what interpretation is being invoked to keep prosecution compact. IPO 112 Guidance Cmts. at 6-7.
There are a number of practical pointers to consider in light of the 112 Guidance. With respect to the heightened bar for disclosure of computer-implemented algorithms under written description, enablement, and definiteness, an applicant should peel back each layer of the onion – in this case each function several layers deep, and disclose the particular implementation of each sub-function. In instances where the function is the patentable part of the algorithm (i.e., novel and non-obvious), the applicant must disclose all details needed to implement that function to satisfy the heightened written description, enablement, and definiteness requirements. Of course, where the function is routine, such as storing data in a memory, then further details are unnecessary. Nevertheless, the key takeaway is that practitioners should strive to include a robust disclosure of each of the sub-functions of novel and non-obvious functions.
To avoid a means-plus-function claim interpretation, an applicant should use claim terms that one of ordinary skill in the art would recognize as “sufficiently definite structure.” 84 Fed. Reg. 59-60. Where an applicant intends to invoke the plain meaning of a term, the applicant may consider defining the term in the specification or putting the plain meaning of the term in the claim. Moreover, as pointed out by the Software & Information Industry Association (SIIA) “[w]hether § 112(f) is triggered depends entirely on the structure or lack of structure recited in the claim.” SIIA Cmts. at 3. To avoid a means-plus-function interpretation, the applicant should consider reciting additional hardware structures in a device claim. Hypothetically speaking, for a mobile device that implements novel image processing functions, an applicant could claim a mobile device including an image sensor, a memory, a processor coupled to the image sensor and the memory, and image processing programming in the memory that when executed by the processor cause the mobile device to implement the novel image processing functions.
It is important to consider that disagreements about § 112(f) invocation cannot be adjudicated by the Patent Trial and Appeal Board (PTAB) unless the § 112(f) invocation is relevant to adjudicating the propriety of a rejection, such as anticipation, obviousness, etc. In other words, when an application is allowed but the applicant disagrees with the claim interpretation, the applicant cannot appeal the rejection to the PTAB. In this situation, the applicant should consider filing comments in response to a Notice of Allowance stating that the existence or lack thereof of applicant statements regarding the propriety of § 112(f) invocation should not be used to infer applicant intent or acquiescence regarding that issue.
Whether you agree with the direction the Patent Office is taking or not, the Patent Office and Director Iancu should be commended for taking leadership on the hotly debated issue of subject matter eligibility in light of the evolution of the case law. The 112 Guidance counterbalances a lower standard for subject matter eligibility under the “practical application test” of the 101 Guidance. Over the last several years, computer-implemented functions were subject to heightened scrutiny in the courts and the Patent Office under Section 101, but going forward the focus of the Patent Office is on Section 112.