Importance of Detailed Patent Description for Algorithm Under Section 112(6)
A detailed patent description of an algorithm is crucial to securing the right to use your invention. Besides showing that you have invented something, a detailed description also demonstrates the interdependence of the software and hardware that perform the claimed function. Here are some tips for drafting your claim language to avoid Section 112(6). Also, see our previous articles on PTAB’s refusal to apply prior art.
As a general rule, a patent must include an “algorithm” corresponding to the claimed function, and the federal circuit requires definiteness in the specification. Nonetheless, patents may be invalid if they do not include an algorithm. In this article, we will look at the details of this requirement. The first step in the definition of an algorithm is to determine the purpose of the algorithm. This is done in a step-by-step manner.
A description must be written and should include an “enablement” that allows the invention to operate. This requirement applies to all inventions, including software-related ones. The disclosure must also demonstrate the interaction between the claimed hardware and software. In other words, the algorithm must be able to demonstrate its function through the use of hardware and software. In addition, the disclosure must show that the software is “functional” in the sense that it enables the claimed function.
Avoiding Section 112(6)
In determining whether to apply Section 112(6), it is critical to consider the details of the claim’s underlying function. This is the function of the element in question. The acts refer to the specific steps required to perform the function. The specification must be able to support the function of each claim element. The underlying function of an element is clearly discernible from the specification and the context of the claim.
When drafting a software patent claim, inventors must remember that the claim must have structural support, such as an algorithm. The failure to provide adequate structural support may invalidate the claim as “indefinite.”
However, the Federal Circuit has provided guidance on the level of specificity required for a software invention. Patentees debate the appropriate level of granularity for a software-based claim and whether a patentee must describe the structure of the software in a detailed manner to ensure definiteness. As long as a patentee demonstrates the ability to implement or write the algorithm in question, the claim is eligible for protection.
When drafting a patent application, it is important to consider the specific language in the specification and claim. While it is not always possible to avoid Section 112(6) completely, patent applicants must carefully consider their claims and patent claims in order to ensure that they will not be thrown out. The Federal Circuit has a strong presumption against the use of generic placeholders. The Federal Circuit also notes that this presumption is still strong. While this may not be an effective solution for your case, it is crucial to understand Section 112(6) and its implications.
The Williamson decision further broadens the scope of Section 112(6) claim elements. It has also overturned previous Federal Circuit decisions that made it harder for patent applicants to use “means” in their claims. Although the Williamson decision has been helpful in clarifying these issues, it is important to ensure that a detailed patent description for algorithmic methods avoids this rule. While there are many factors to consider when drafting a patent application, the USPTO has set forth a broad standard for assessing whether a claim has functional elements.
Drafting claim language to avoid Section 112(6)
When drafting claims, it is critical to use clear and concise language. If the claim language is unclear or vague, it may be rejected under SS 112(6). Claim language should also avoid using the word “means” or preamble phrases that may be construed as means-plus-function limitations. In addition, preamble phrases should never include the word “for,” as the term “for” is not always construed as a “means-plus-function limitation.
When drafting claim language to avoid Section 112(6), keep in mind the two major guidelines in the Lilly case. First, the Lilly case highlights the impact of Section 112 on non-combination claims. Second, a single-step patent claim that describes the point of novelty in functional terms may violate the Halliburton Oil Well Cementing Co. v. Walker rule. Fortunately, these rules are not as difficult to follow as they may seem.
In addition to avoiding Section 112(6), it is crucial to understand the rules of construing claims. Courts should look at intrinsic evidence, including claim language, specification, and prosecution history. In addition, courts should consider the perspective of the ordinary person in the art, and may require expert testimony and dictionaries to help them decide. In Apex, a court construed the claim as a means-plus-function limitation with a sufficiently definite structure.
PTAB’s refusal to apply prior art
In its decision, the PTAB rejected the petitioners’ argument that the reference patent was incorporated by reference and therefore prior art under Section 112 of the Patent Act. This holding applies to patents and published applications alike. In the case of the reference, however, the petitioner failed to show that the reference disclosed the challenged claim subject matter in an adequate written description. As a result, the petitioner failed to meet its burden under Section 112 of the Patent Act.
The PTAB rejected the petitioner’s claim construction on the grounds that the means-plus-function claim was indefinite and not amenable to construction. It also noted that the challenged claims were recited by a means-plus-function limitation. The PTAB found these arguments unambiguous and fatal to the means-plus-function challenge. Nonetheless, the PTAB found that three of the seven challenged claims were unpatentable.
On the other hand, the PTAB’s decision was not as conclusive as the Federal Circuit would have preferred. Moreover, the patent at issue had not yet been asserted in litigation. The Federal Circuit may not consider the case relevant in non-interference contexts, and the PTAB is not required to apply the “representative number” standard. However, the court may reverse the PTAB if the evidence is sufficiently persuasive.
The Supreme Court’s decision in the case of the PTAB’s refusal to apply prior arts for algorithm under Section 112 makes the case even more important for the patentability of algorithms in the software arena. This decision is likely to affect the way patents are prosecuted and whether legislation is needed to rein in patent trolls. The en banc’s decision has important implications for patent holders and infringements.
The patent owner points to certain disclosures in the specification as evidence that the claims are infringed. Nevertheless, he failed to provide the necessary algorithms for the claimed functions. In addition, the patent owner does not provide a response to the petitioners’ arguments. The court finds that the claims are not infringed and issuing in the United States.