Last week, Google submitted comments to the USPTO pertaining to the enhancement of the quality of software-related patents.  Google’s position is that proper application of 35 U.S.C. § 112(f) would solve many of the problems being experienced with software patents.  These problems include preemption, over breadth, and lack of clarity as to the boundaries of the claim scope.  Google points out many flaws in current examination procedures and offers solutions that would require changes to the MPEP and policy at the USPTO.

Google claims that many software patents contain functional claim elements without providing sufficient structure, either in the claims or the specification, to satisfy section 112(f).  A number of methods that applicants have used to avoid analysis under 112(f) are discussed in detail.  These methods include reciting a general-purpose computer, general-purpose software, or coining new terms (i.e., selector, validator, etc.) that do not add to the level of disclosure.  Google asserts that these types of claims are functional and should be subject to rigorous review by the USPTO under section 112(f).

Google offers a few different strategies that could be used to solve the problems with software patents.  First, Google suggests that examiners should have to determine if section 112(f) applies for all software patent applications.  Currently, unless certain buzzwords are used, the MPEP embraces a rebuttable presumption that section 112(f) does not apply.  This gives applicants the opportunity to avoid analysis under section 112(f) by simply not using the identified functional language in the MPEP.  Most of the functional terms that are offered as examples in the MPEP do not readily apply to software.  Google suggests that the USPTO should not rely on the presumption against section 112(f) application for software patents.

Google also addressed the evidence that should be considered for analysis under section 112(f) and how the analysis should be recorded.  Google suggests that intent evidence should not carry weight under section 112(f) analysis. The only relevant inquiries into whether a claim recites sufficient structure are to look at the statute and the disclosure.  Google supports the USPTO’s proposal that the examiners require all applicants to particularly point out supporting structure in the specification for claim elements subject to section 112(f).  Google also suggests that the discussion between the examiner and the applicant should be included, in its entirety, in the record.  This would result in many applications being amended during prosecution rather than resolving the ambiguity in litigation.  Google also asserts that algorithms must be included with every software patent, including both system and method claims, in order for it to satisfy the requirements under section 112(f).  The algorithm must identify the inputs, the outputs, and enough detail to allow someone to take the actions necessary to generate the outputs from the inputs.  This requirement cannot be satisfied by including a high-level flow chart because, while this may enable a skilled artisan to implement a claimed function, this does not satisfy the definiteness requirement of section 112(f).  Google stresses that the purpose of section 112(f) is to define the bounds of the claim and to prevent patentees from claiming all possible means of achieving a function.

Lastly, Google recommends that changes to the MPEP be made and examiners receive new training as to how to apply section 112(f) more thoroughly to software patent applications.  Specifically, Google states that the presumption against section 112(f) analysis should be removed from the MPEP and training should be provide for analysis of functional claims in the software context.