Industry Urges Better Enforcement of PTO’s Rules on Functional Claims

The U.S. Patent and Trademark Office (PTO) should take steps to eliminate functional claiming -- when a patent claim recites the function of a piece of software -- because such claims allow patentees to “claim functions, not inventions” and therefore obscure the patent’s limits, Verizon Communications said in a filing the PTO released Monday. The PTO collected comments through April 15 on possible reforms to improve the quality of software-related patents as part of its “Software Partnership” with industry; the agency released filings from Verizon and other companies and industry groups filed at the deadline (CD Feb 28 p16).

The PTO should make clear that patent claims that use functional language that lack sufficient “associated structure” within the claim or accompanying specification are invalid, Verizon said. The PTO should also “set a high bar for what constitutes sufficient structure when a patent utilizes functional language,” the telco said. In the case of software, the claim should at minimum provide “all the information necessary to perform the recited function,” Verizon said (http://1.usa.gov/ZKgWYN).

Microsoft and Adobe said in a joint filing they agree with the PTO that a more rigorous application of Section 112(f) of the Patent Act would be the “most appropriate means” for eliminating ambiguity in software-related patent claims. Functional claiming is a problem that the PTO needs to address, but “we do not perceive any fundamental divergence in claims to computer-implemented inventions that would justify singling software out for special treatment,” Microsoft and Adobe said. If the PTO does change its application of 112(f), any new rules should be technology-neutral and not limited to software-related patents, Microsoft and Adobe said. They encouraged the PTO to address functional claiming by strengthening examination practices and legal standards for the written description, enablement and definiteness requirements in patent law. Such a strategy would be “more likely to increase claim clarity and provide a more appropriate mechanism to address legitimate concerns regarding the unpredictability and cost of patent litigation,” Microsoft and Adobe said (http://1.usa.gov/15FfP3r).

BSA/The Software Alliance said the PTO should not make rules that limit how claims can be drafted, especially for one specific industry. As long as a claim follows the statutory requirements in 112(f), “an inventor should be free to draft claims in whatever manner she believes best describes her invention,” the group said. That said, patentees and examiners should spend more resources analyzing applications under 112(f) seriously and more rigorously apply the statute, BSA said. If PTO intends to “address broad and ambiguous patents that simply claim a result instead of identifying a series of steps that produce a result,” BSA said it supports those efforts. But if the PTO intends to focus on functional claiming generally, BSA said it believes the agency should focus on other efforts to improve quality, since a broad rule would “potentially limit an inventor from receiving complete protection for the full scope of her invention.” The group said PTO should not focus on functional claiming rules that specifically target the software industry, since “different rules for different technologies become unworkable when fields of technology merge.” Industry-specific rules would also likely become “unworkable because new technologies will not have a reliable framework from which to assess legal protection for new inventions,” BSA said. It would also likely create a precedent in which the law would need to “morph” to address new technologies, which historically “results in legal frameworks that cannot keep up with the technological advances to which the law pertains,” it said. “Furthermore, specific rules for software patent applications are troubling because the concept of ’software-related inventions’ has no clear meaning” (http://1.usa.gov/11JEJbH).

The Software & Information Industry Association (SIIA) said PTO should use tools currently at its disposal to better examine patent claims for compliance with 112(f). Examiners must better recognize when 112(f) applies, as appropriate enforcement of the statute during the examination process can “result in claims that provide better notice to the public and help reduce problems associated with broad and vague claims in software patents,” SIIA said. The group said it does not recommend instituting special rules on functional claiming for the software industry or that software-related patent claims be treated differently. “SIIA’s view is that both current law and PTO procedure already provide long-standing requirements for full, clear, precise descriptions in the specification and avoidance of all indefiniteness in the claims,” the group said. “The real challenge here is one of rigorous enforcement of current requirements, through education of applicants and examiners” (http://1.usa.gov/17gpawU).

The Application Developers Alliance (ADA) said PTO should require “plain writing” in patent applications, with examiners disapproving applications “that do not very clearly describe both the invention and the claims in terms that are comprehensible to the reasonably smart person in the relevant professional field.” The Plain Writing Act of 2010 and an executive order require plain writing in public-facing federal documents, and patents meet that definition, ADA said. PTO should also enforce rules requiring patent applicants to describe the invention in enough detail that the reader can make and use the claimed invention, ADA said. The agency should also require applicants to submit working code before it will grant a software-related patent, in order to “ensure that something has actually been invented and that it actually works,” ADA said. If working code does not yet exist, the examination process must be “much more exacting” and thorough than it currently appears to be, the group said. PTO should also limit grantable patent claims to “actual, documented” inventions, which would prevent the agency from granting claims that “are broader, or could be read to be broader, than the actual invention demonstrated, publicly disclosed, and enabled by the patent application,” ADA said. PTO needs more examiners and more funding to improve the quality of patents, ADA said (http://1.usa.gov/15G8XTF).

The Electronic Frontier Foundation (EFF) said PTO should “diligently apply” its 112(f) requirements, as well as 112(a) requirements on written descriptions in patent applications. The agency should also require software-related patent applicants to submit working code for each claim, EFF said. The code should be written in an acceptable programming language like C+, Java, PHP or Python, EFF said. If the code is submitted in a lesser-known language, it should have line-by-line commentary to aid the examiner, the group said. The working code can easily be incorporated into any patent application’s specification, EFF said (http://1.usa.gov/Y1YUWJ).