In Bloomberg Law Article, Michael Kahn and Andrew Schreiber Offer Tips on Prosecuting and Enforcing Valid Software Patents
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Bloomberg Law has published “INSIGHT: Stabilizing the Software Patent Field,” an article by Akin Gump intellectual property partner Michael Kahn and associate Andrew Schreiber. The second in a two-part series (click here for more on the first installment), the article looks at guidance from the U.S. Patent and Trademark Office (USPTO) earlier this year regarding patent eligibility, and offers practice tips for prosecuting and enforcing valid software patents.
The article summarizes the USPTO guidance toward Section 112(f) of the U.S. Patent Act, which “allows patentees to claim their invention as a means for performing a certain function—a method commonly employed by inventors in the software space.” Kahn and Schreiber write that this follows an earlier decision by the U.S. Court of Appeals for the Federal Circuit that “overruled the strong presumption that claims lacking the word “means” should not be considered under Section 112(f).”
The authors write that the guidance “fits into the recent, broader USPTO effort to achieve consistency in application of the Patent Act and across disparate technology fields.” They say it also shows that the USPTO “is giving practitioners the tools to prosecute and enforce valid software patents.” As a result, Kahn and Schreiber suggest that inventors “make sure to provide sufficient structure for computer-implemented means-plus-function claims, including algorithmic support.”
To read the full article, please click here.
