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The PTO Expands Its Publications to Include Key Decisions in Functional Claiming

The PTO website has recently been updated to identify Patent Trial and Appeal Board (PTAB) decisions that may be of interest to Applicants. In addition to the usual categorization of PTAB decisions as “Precedential”, “Informative”, or “Final”, the PTO website now identifies “Key Decisions in Functional Claiming.” This update is very useful as the treatment of so-called functional language, sometimes used in claims to describe a structure by what it does rather than by what it is, has been the subject of evolving case law.

Functional language may be beneficially used to describe an element of a claimed invention without requiring specific structure. However, use of functional language may cause a number of problems if not used carefully. For example, depending on the specific words used, so-called functional language may cause a claim element to be interpreted as a “means” term under 35 USC § 112, which limits the claim element to corresponding structures disclosed in the patent specification and equivalent structures. As another example, functional language is often improperly ignored by patent Examiners, making procurement of a patent more difficult and costly. The decisions thus far published highlight several pitfalls that may be encountered during patent prosecution. Regular review of these decisions may be useful for providing insight towards prosecuting claims more efficiently and avoiding undesired issues during patent prosecution.

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