Reston patent attorney Michael Teich recently spoke to Law360 about the new guidance issued to USPTO examiners concerning computer-related patents and Section 112.
The guidance, which was issued Friday, January 4, emphasizes the need for patent applications to adhere to proper standards for written descriptions.
The new guidance may be an attempt to line examiners up behind USPTO Director Andrei Iancu, who previously told Law360 that patents written with functional language can be too vague and therefore subject to rejection under Section 112.
While examiners have historically been able to help patent practitioners modify claims and use more definite language, the new guidance will get all of them on the same page in avoiding functional language that does not include a description of how the function is carried out.
The 2015 Federal Circuit decision in Williamson v. Citrix is also highlighted in the guidance for its ruling on means-plus-function patent claims. These claims, which describe a means for performing a certain function, must include a corresponding structure such as a computer algorithm. If the structure is left out, the patent will declared invalid as indefinite under Section 112. This is true even if the patent does not use the word “means” or similar terms like “device for” and “mechanism for.”
According to the Law360 article, the guidance further defines an algorithm as “a sequence of steps for solving a mathematical problem or performing a task, and says it can be expressed in a patent application by a mathematical formula, a flow chart, prose or other manner.”
What does this mean for the actual patent applications? “The practical effect is not yet clear,” says Teich. “What the guidance says and what happens in actual examinations are not always exactly the same.”
Teich points to a perceived counter-effect that could take place in which fewer applications are rejected due to eligibility issues, but more could be invalidated for indefiniteness. “If the PTO puts out a new 112 memo,” he says, “do you start seeing examiners focus on 112 much more and are you going to see many more 112 rejections? We will have to see.”
For now, most attorneys and patent owners should agree that the increased attention Section 112 is receiving can be viewed as a good thing.