08 May 2010

Will USPTO use Section 112 more often in rejections of software patents claims?

USPTO Director David Kappos recently commented on the March 22, 2010 Federal Circuit en banc decision Ariad Pharmaceuticals v. Eli Lilly and concluded that the written description requirement remains alive and well and is an essential “backstop” against overclaiming. In the case, the Federal Circuit held that Section 112 of the Patent Act has a written description requirement that is separate and apart from the enablement requirement. 

The Ariad decision is considered important for the USPTO because written description is a critical tool for ensuring that an applicant does not claim more than he is entitled to claim. The Office recently conducted a survey of 6,865 final rejections issued over a 4.5 year period between 2005 and 2010.  A written description rejection was made in about 9.7 percent of all applications during this time period.  This data shows that the written description doctrine is essential to the Office’s ability to perform its basic examination function. 

Now, Jim Singer concludes in his recent IP Spotlight post that this may be a signal that the USPTO intends to apply Section 112 more aggressively to software claims, since Mr Kappos explains:
[T]he written description doctrine is particularly useful in examining claims that employ functional language, or that merely set forth a desired result without any indication of what achieves that result. . . .  Thus, when confronted with functional claims, as with results obtained claims, I encourage examiners to carefully consider whether such claims — amended or original — are adequately supported by the specification.
And, since it's not a secret that patent claims relating to software often use functional language, as the function of the software is typically what separates it from the prior art, Mr Kappos strongly supports the USPTO examiners using the written description requirement to prevent issuance of such vastly overbroad recitations. Unless an applicant has devised every solution to a problem, the applicant is not entitled to patent every solution.