Software Patents: Enablement, Definiteness, Means Plus Function, Step Plus Function, On Sale, Public Use

Description

Software inventions face some challenging issues from § 112, including written description, enablement, definiteness, means plus function, and step plus function. For example, computer-implemented functional claim limitations may invoke § 112(f) when claiming a “means” or “step” for performing a function without reciting the specific structure, material, or acts that perform the function. When § 112(f) is invoked, the Federal Circuit has consistently required that the specification must disclose an algorithm for performing the claimed function. Failure to do so may render the claim invalid.

The circumstances under which a software claim invokes § 112(f) has evolved. In 2015, the Federal Circuit’s Williamson decision eliminated the heightened presumption against applicability of § 112(f) when the claim limitation lacks the word “means.” Also, in January 2019, the USPTO issued § 112(f) guidance. And, in June 2019, the Senate Judiciary Committee’s Subcommittee on Intellectual Property heard testimony regarding a draft bill that would, among other things, expand the applicability of § 112(f) by eliminating the current “means” language, which proponents have argued will rein in overbroad claims. Accordingly, § 112(f) will continue for the foreseeable future to impact applicants in prosecution as well as patent owners in post-grant proceedings and litigation. Knowing when claims may invoke § 112(f) is critical to avoid a narrow construction or, worse, invalidity.

Further, the on-sale and public use bars raise unique issues for software inventions. Patent counsel must understand how these bars are applied to software.

Listen as our authoritative panel of patent attorneys discusses software patents and the issues of enablement, definiteness, means plus function, step plus function, the on sale bar, and the public use bar. The panel will review key Federal Circuit cases, the USPTO guidelines, and PTAB decisions and provide practical advice.