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23 “Software modules are often specified in functional terms and the details of the underlying algorithms are left to implementation. While this level of description is generally enough to guide software development, it is not enough to support a means-plus-function claim in a patent application.”
How much detail is needed in a patent application for a software-based invention? Software patents present some unique challenges that many other kinds of patent applications do not need to contend with, one of them being the level of disclosure and care in drafting needed to avoid indefiniteness issues. While source code is not required in most cases, a growing body of case law indicates that insufficient detail about the algorithms underpinning the invention could render the patent claims indefinite, meaning that the scope of the claimed invention is too ambiguous. If the patent examiner deems the disclosure to be inadequate during examination, indefiniteness could prevent a patent from issuing. In the case of an already-issued patent, indefiniteness could render the claims unenforceable.
Getting Down to Details
Indefiniteness is a particular risk for software patents when a claim identifies a software module that performs a particular function without indicating how the function is performed. A claim might include “an encryption module configured to encrypt a packet,” without indicating how the encryption is performed. These “means-plus-function” claims are considered indefinite if the body of the patent application fails to disclose the structure that performs the function, which in software patents means the algorithm performed by the claimed module. In the recent case of Rain Computing, Inc. v. Samsung Electronics America, Inc., 989 F.3d 1002 (2021), Samsung successfully argued that Rain Computing’s claims to software package delivery techniques were indefinite because the specification did not disclose the algorithm by which the claimed “user identification module” performed the function of controlling access to a software package.
Many software patent applications do, in fact, include claims that identify modules without providing sufficient descriptions of the algorithms performed by those modules. This shortcoming is a natural consequence of how software modules are specified during the software design process. A software module provides a layer of abstraction so that a programmer only needs to provide the required input in order to receive the expected output. The programmer generally is not concerned with how the module produces the output, so long as it is done correctly and efficiently. For this reason, modules are often specified in functional terms and the details of the underlying algorithms are left to implementation. While this level of description is generally enough to guide software development, it is not enough to support a means-plus-function claim in a patent application.
Describing an algorithm in sufficient detail to avoid indefiniteness generally does not require source code, which in any event would be challenging for the patent examiner to review and might not even be available at the time the patent application is filed. The courts have indicated that an algorithm could instead be expressed as a mathematical formula, a textual description, a flowchart, or in some other way that goes sufficiently beyond mere functional descriptions. Drawings might include a detailed flowchart of operations, along with written descriptions of each step. A Uniform Modeling Language (UML) behavior diagram also can be used to describe an algorithm, provided that the accompanying description includes enough detail about what each component does. Pseudocode is another good option for describing an algorithm, and can be expressed at a high enough level to cover many different implementations. The level of detail needed to describe an algorithm for a patent application can often be found in whitepapers, architectural diagrams, use cases, simulations, models, etc. Conversely, if material seems well-suited for a marketing slide deck, then it is probably not detailed enough.
Improve Your Chances
Because of the risk of indefiniteness, best practice suggests that means-plus-function claims should be avoided in software patent applications. However, there is always a risk that an examiner will construe a claim as invoking means-plus-function requirements, even when it was not intended as such. By providing details of the algorithms performed by key software modules in the invention, the patent application stands a significantly better chance of being both allowable and enforceable.
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Join the Discussion
23 comments so far.
Anon
July 30, 2021 07:36 amWhy should I join you?
George
July 29, 2021 04:57 pmLOL! Get lost!
Anon
July 19, 2021 09:45 pmHow interesting – how long have you thought that others felt like there was any type of “requirement” for ANY response?
By the way, you should read what I actually stated: I was taking about your “exclamation mark” tell — not any type of ‘trademarked LOL.’
Do you recognize how inane your statement of, “And yeah, I don’t NEED anonymity to ‘protect’ me, either! What’s the matter, afraid you’ll one day get outed, so people can look into your background? is?
No one ever said ‘need’ (that’s a strawman), AND you betray your own boastfulness because you STiLL don’t practice what you yourself preach (all the while choosing to remain ignorant on the aspects of pseudonymous and anonymous posting).
Here’s a hint: my choice is not based in fear. Perhaps that is all that you can see and understand (“George”), why else would you bray so loudly about a course of action you yourself do not take — right now in this instant?
And keep in mind, I have been perfectly clear that I do not NEED you to out yourself for me to be able to judge the content of your posts.
Why would I?
George
July 19, 2021 06:46 pmDidn’t use my (supposedly) trademarked ‘LOL’ in the last comment, did I? So, I WASN’T joking at all in my last remark (in response to your ‘obligatory’ knee-jerk response).
You know, you’re NOT REQUIRED to respond to any of my comments (unless they actually attack YOU), right? Haven’t seen anyone one else complaining incessantly about them. And yeah, I don’t NEED anonymity to ‘protect’ me, either! What’s the matter, afraid you’ll one day get outed, so people can look into your background? I’m not! Wouldn’t bother me at all. I always sleep like a baby!!!
LOL! (now I’ve used it – b/c this is all so funny).
P.S. One day EVERYONE will find out who you are, and who you are ‘pretending’ to be! Then the jig will be up!
Anon
July 18, 2021 09:22 am“LOL!!! No one even knows who you are, DUMMY!”
George,
Are you aware that you have a ‘tell’ with your use of exclamation marks? You use them as a type of ‘weaseling’ when you appear quite unsure of yourself (and want a ‘later out’ of “but I was joking”).
“ You want it that way because you are a ‘coward’! Real ‘movers & shakers’ WANT people to know who they are!”
So – by your very own ‘logic’ you just called yourself a coward and labeled yourself as NOT a real mover & shaker.
You seem unable – or unwilling – to recognize ANY of the values of anonymous or pseudonymous posting, the actuality that my pseudonym of “Anon” is in fact established here (every bit of the pseudonym of ‘George’ – given that YOUR ‘real’ identity is no more divulged than my own), and that value comes from the content of posts far more than any borrowed authority that may come from the use of a real full name.
“And, they’ll will learn who I am by the end of next year!”
We’ve been over this – there is NO ‘value’ for you in overcoming your own slurs AT THIS TIME from any projected ‘reveal.’
ALL of this just comes across as you lacking the cognitive ability to even understand the current exchanges.
One simply NEED NOT have any ‘real identity’ to be able to evaluate the CONTENT already shared. The aspect of ‘borrowed authority’ that inures to the reveal of actual identity does not – and cannot – change the actual content of messages shared.
Judge on that content.
George
July 17, 2021 09:58 pm“Had you been paying attention, there are many of us in the legal profession (notably ME) that have been a champion for strong patent rights for well over a decade now.”
LOL!!! No one even knows who you are, DUMMY! You want it that way because you are a ‘coward’! Real ‘movers & shakers’ WANT people to know who they are!
And, they’ll will learn who I am by the end of next year! Then, of course, YOU can reveal your identity too, right (and where you practice your ‘powerful brand’ of patent law too)?! Maybe we’ll find out how many ‘great’ patents you’ve prosecuted as well – or how many were ‘junk’!
Anon
July 17, 2021 09:17 amGeorge,
Your rants have become rather bland and stale.
I am not certain who you think your audience is, or what message (other than, “I don’t like the current system and my fantasy world of AI overlords would be much better”) you are trying to impart.
Your 639 additional words provide nothing substantively new, while adding more of your confusion as to the structures of IP law (patent versus copyright) and non-IP law (Nobel prizes).
Further, you continue to play the blame game — and miss badly — the legal profession did this…? really…? You might want to reevaluate just who is the driver of the current plight.
Had you been paying attention, there are many of us in the legal profession (notably ME) that have been a champion for strong patent rights for well over a decade now.
George
July 15, 2021 05:22 pmScrew all this! If it’s good enough to get a Nobel Prize (decided by actual experts in the field in question), or any other type of professional recognition, then it definitely should be good enough to get a ‘broad’ patent – even if written in crayon!
And, that includes many ‘scientific advances’ which are now considered to be ‘abstract’! Almost everything in the ‘information age’ is now ‘abstract! Some kinds of ‘new knowledge’ and maybe even some types of critical ‘new data’ should be patentable – in addition to copyrightable (if they have ‘new’ commercial value).
Those providing useful ‘new’ information and ‘ideas’ deserve to be able to monetize those ideas! That’s really what the Founders wanted – to incentivize innovation and help grow the economy. How are you going to keep innovation going and grow the economy, if almost NO ONE can now get ‘valid’, ‘enforceable’, and ‘broad’ patent protection anymore?! It just doesn’t work! The system just doesn’t work anymore and China will, therefore, eat our lunch (and get lots of great new technology FOR FREE too).
George
July 15, 2021 05:04 pm@TFCFM
“Courts regularly hold invalid expansively-written claims which rely on limited disclosures, and they do so alternatively for reasons of insufficiency of description, indefiniteness, insufficiency of enablement, and/or “abstractness.” These holdings are not unique to any field of technology (even if broad-claims-based-on-narrow-disclosures are easier to hide in jargon-rich technical fields such as biological and computer/software technologies).”
Funny, but such arguments NEVER seem keep someone from getting a Nobel Prize! LOL! Why don’t the courts ‘invalidate’ those? They’re MUCH MORE valuable than even ‘valid patents’!
Admit, folks – it’s all just a ‘big game’ (i.e. a new ‘sport for Kings’), meant to deny average people any ‘real’ intellectual property rights. What inventors are getting now are just ‘virtual patents’ or ‘preliminary patents’ – not real ones. They are ‘make believe’ patents that are useful only for hanging on walls! Admit it, patents are now worthless and essentially unenforceable!
George
July 15, 2021 03:04 pmSpeaking as a REAL and ACTUAL inventor here:
Almost ALL patents can now be ‘fairly easily’ (but not cheaply) invalidated! That’s the (BIG) problem the legal profession has now created for itself . . . and doesn’t know how to fix!
Show me ANY ‘broad’ patent that CAN’T BE invalidated in the 21st century? In fact, show me ANY ‘patent portfolio’ (that includes broad patents), that can’t be invalidated – in order to protect large corporations and especially monopolies like Microsoft, Google & Apple?!
The USPTO is literally ‘in bed with’ these corporations (who are after all their best customers). Take for example the now disgraced and completely fraudulent Theranos company, who got over 200 patents in 3 years or less – regardless of all the above ‘time-blowing’ (and ‘mind-blowing’) legal ‘machinations’, which get more and more convoluted with each passing year (and are ‘designed’ for only one purpose – making lawyers even more money).
As an ‘actual inventor talking’, let’s just START ALL OVER with what the Founders REALLY ‘intended’ (and it clearly wasn’t spending lifetimes in debates with the PTO, or in a courtroom)! Everything must be made MUCH SIMPLER again, so that even ‘ordinary people’ can understand what’s going on and what the requirements are to get a patent that should be reducible to even simple ‘take-home tests’. That’s what IP SHOULD BE – simple enough that any ‘group of ordinary people – i.e., a jury of peers – not lawyers’, can understand ‘everything’, like what constitutes a murder, for instance! We don’t ‘debate’ what constitutes a murder for DECADES! The decision about whether or not someone – anyone – rich or poor, gets an ‘enforceable’ patent, or not, should be made as SIMPLE as possible and even determinable by a computer (who wouldn’t care if you are Apple or Joe Schmo)!
Anon
July 6, 2021 12:00 pmTFCFM,
Your mis-characterization of “insult, hand-waving, and diversion is just that: mischaracterization.
As I have stated a number of times now, your tactics might impress your non-attorney friends and you may have fed your ego ‘dazzling’ them with such tricks, but they just do not work here.
TFCFM
July 6, 2021 10:23 amNone of attempted insult, hand-waving, and diversion is counter-argument.
This discussion is occurring in this discussion stream. If you can’t discuss intelligently, don’t bother pretending that you did in some other discussion. AS EVER, if you had a point, you’d have made it.
Anon
July 5, 2021 09:58 amTFCFM,
Then follow that by picking up the comments on this thread:
https://ipwatchdog.com/2021/06/25/cafc-denies-amgen-petition-reconsider-enablement-test-biotech-patents/id=134960/
Anon
July 5, 2021 09:54 amTFCFM,
Go back and follow the discussion unfolding at:
https://ipwatchdog.com/2021/06/08/written-description-in-the-life-sciences-the-devil-is-in-the-details/id=134343/
Your “ even if it sometimes takes courts some time to cut through the jargon surrounding emerging technologies” is more of a lack of you understanding the particular technologies coupled with a few that “the court must be right.’
That is not – and never has been – a winning combination for you.
TFCFM
July 2, 2021 09:48 amAnon@#8: ““describe the structure” is a B R O A D L Y construed term. (as it should be in the computing arts)”
Courts regularly hold invalid expansively-written claims which rely on limited disclosures, and they do so alternatively for reasons of insufficiency of description, indefiniteness, insufficiency of enablement, and/or “abstractness.” These holdings are not unique to any field of technology (even if broad-claims-based-on-narrow-disclosures are easier to hide in jargon-rich technical fields such as biological and computer/software technologies).
It seems to me that folks who continually express “surprise” about this fact should reconsider whether their expectations are based in patent law as it is applied in the real world or are instead based on an imaginary world in which inventors are entitled to
– merely state a function,
– describe one solution (if even that) which they’ve invented and which performs the function, and
– broadly claim all future solutions which perform the same function.
When courts recognize the practice, courts invalidate the practice — even if it sometimes takes courts some time to cut through the jargon surrounding emerging technologies.
Anon
July 1, 2021 02:13 pmOf course, Mr. Karlsson, “describe the structure” is a B R O A D L Y construed term.
(as it should be in the computing arts)
Rackham Karlsson
July 1, 2021 09:36 amHi anon, if the specification doesn’t describe the structure that performs the claimed function, then the claim is indefinite because the scope of what is claimed is ambiguous. Of course, if a claim is found indefinite under 35 U.S.C. 112(b), then it lacks written description under 112(a) and also the disclosure might not be enabling. To your second question, enforceability and validity are closely related. If a claim runs a substantial risk of invalidation due to indefiniteness, then its enforceability is severely limited.
anon
June 29, 2021 02:55 pmAre you referring to indefiniteness or lack of enablement? Also, when you refer to unenforceability, do you mean invalidity?
Anon
June 29, 2021 12:09 pmLOL – you are the one ‘not understanding’ and yet want to blame me.
That dog won’t hunt.
TFCFM
June 29, 2021 10:23 amAnon@#2: “Are you still harboring a belief that all innovation falls to the type in the “unpredictable arts” in which abject structure is essential?”
To the extent I can understand what you’re trying to write, you seem to be straining mightily to mischaracterize what I’ve said.
A patent specification must describe, enable, and definitely identify the claimed invention — throughout the scope of what is claimed. When a claim recites “anything and everything that works (or will ever work) to achieve function X,” all three of these requirements become effectively impossible to satisfy (absent perfect and comprehensive psychic ability to predict the future).
Such claims are rightly termed ‘abstract,’ as much as it annoys folks who would seek to preclude all future inventions that might compete with whatever-it-is-they’ve-invented.
Greg DeLassus
June 28, 2021 04:51 pmInteresting article, Mr. Karlsson. Thanks for this.
It seems to me that not long ago, an article like the above would have been regarded as heresy around these parts. It is pleasing to witness the evolution (for the better) of IP Watchdog over the past year.
Anon
June 28, 2021 12:42 pmYour “going further” belies a lack of interaction (and knowledge) of this type of innovation.
Are you still harboring a belief that all innovation falls to the type in the “unpredictable arts” in which abject structure is essential?
TFCFM
June 28, 2021 10:56 amArticle: “…a growing body of case law indicates that insufficient detail about the algorithms underpinning the invention could render the patent claims indefinite, meaning that the scope of the claimed invention is too ambiguous.”
I would go even farther than that: At a sufficiently-insufficient level of detail, your claim may well reduce to one which reads “anything and everything that works to achieve function X,” rendering it susceptible to rejection/invalidation for “abstractness” (of which extreme indefiniteness is one form).