USPTO Issues Reminder to Examiners on Means-Plus-Function Analyses

The U.S. Patent and Trademark Workplace (USPTO) on Tuesday, March 19, issued a memo for all patent examiners reiterating its present practices and assets for analyzing means-plus-function and step-plus-function declare limitations. The memo is primarily centered on reminding examiners that they have to create a transparent document explaining their interpretation of such claims and factors to varied assets and coaching instruments which are obtainable to help them.

35 U.S.C. Section 112(f) reads:

(f) Factor in Declare for a Mixture.—

A component in a declare for a mix could also be expressed as a way or step for performing a specified perform with out the recital of construction, materials, or acts in help thereof, and such declare shall be construed to cowl the corresponding construction, materials, or acts described within the specification and equivalents thereof.

The USPTO’s Handbook of Patent Analyzing Process (MPEP) 2181(I) cites a three-step evaluation for figuring out whether or not or not a declare is “means plus perform”:

1. The declare limitation should use the time period “imply”, “step” or an equal time period (g.,a generic placeholder for such time period);
2. The time period from (1) is modified with practical language, usually linked to transitional language, corresponding to “for” or “such that”; and
3. The time period from (1) is notmodified by adequate construction, materials or acts for performing the claimed perform.

The memo urges examiners to comply with this three-step course of and to pay attention to the presumptions they create in addition to how and when these presumptions are overcome. “…[A] limitation that recites perform with out reciting adequate construction, materials, or acts (for functions of simplicity, right here and under known as “construction”) for performing that perform is to be interpreted below § 112(f),” says the memo. A part of the necessity for following the system and referring to obtainable assets is that “there aren’t any absolutes or permitted lists of phrases used as an alternative to ‘means’ that function generic placeholders,” explains the memo. “The examiner should fastidiously contemplate the time period in gentle of the specification and the generally accepted that means within the technological artwork.”

MPEP part 2181 consists of examples of phrases which have been discovered to not be generic placeholders and phrases which have been. Some frequent generic placeholders embody: “mechanism for,” “module for,” “machine for,” “unit for,” “part for,” “component for,” “member for,” “equipment for,” “machine for,” and “system for.” The memo asks examiners to make use of type paragraphs to help the Workplace’s objective of creating a transparent prosecution document by making a declare interpretation part in an Workplace motion “by which examiners can set forth any presumptions and clarifying remarks.” This can assist to tell the general public, the applicant and the courts of the declare development utilized by the examiner throughout prosecution in addition to “how the examiner searched and utilized prior artwork based mostly on the examiner’s interpretation of the declare,” says the memo.

Part C of the memo offers with evaluating the adequacy of the supporting disclosure as soon as a declare limitation has been interpreted to invoke Part 112(f). It stresses {that a} discovering of indefiniteness/ ambiguous claims after utilizing the three-step take a look at needs to be uncommon and that in circumstances the place the result’s ambiguous the examiner should clearly state their interpretation on the document. It additional emphasizes particular concerns for computer-implemented declare limitations and evaluating whether or not indefinite means-plus-function claims below Part 112(b) meet the enablement standards for Part 112(a).

A press launch on the memo stated that “[c]learer USPTO communications present each the applicant and the general public with discover as to the declare interpretation utilized by the patent examiner throughout prosecution, and if the applicant intends a special declare interpretation, the difficulty might be clarified early in prosecution.”

In an announcement, USPTO Director Kathi Vidal stated the steering is a part of the Workplace’s “continued work to create extra sturdy and dependable mental property rights on which patent candidates, traders, and the general public can rely and use to construct a stronger financial system.” She additionally stated it builds on the Workplace’s Part 101 and Section 103 guidance “to make sure the USPTO is utilizing constant interpretations of the legislation throughout the company.”

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