Means-Plus-Function and the Risk of Losing Your Way

By: Josh Sloat

Means-Plus-Function

The Risk of Losing Your Way

Word choice matters a great deal in the world of patenting. You’re using the English language to draw a picture around highly technical concepts. The precision with which this is done, down to the semantic level, can make all of the difference when it comes to your patent application being rejected or granted – and the future likelihood of your ability to assert your rights or defend against invalidation. Word choice too narrow or overly specific – and you can easily be designed around by competitors. Word choice too broad and only describing what something is vs. what it does and you risk rejection or invalidation for what will be ruled as linguistic tricks to get more coverage than what you actually invented. The tension is real and the case law interpretation is fluid, but it all still comes down to determining if the chosen words will enable a person of ordinary skill in the art to carry out an invention – in the interest of other inventors being able to build on the idea, while also avoiding trespassing with infringement.

One very particular place this tension between breadth of coverage and specificity in enablement arises is with the concept of means-plus-function claim language. In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion, along with our all star patent panel, into the nuanced world of means-plus-function claiming. The group digs into the statute, explores relevant case law in an analysis of the kinds of word choices that have and haven’t caused problems for inventors, and also provides some great drafting tips for de-risking the use of means-plus-function claim language.
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Ashley is joined today by our always exceptional group of IP experts including:

⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ David Cohen, Principal at Cohen Sciences
⦿ Shelley Couturier, Patent Strategist and Search Specialist

Before jumping into the deep with the panel, we also provide a quick primer on key concepts including specification vs claims, Section 112 enablement, functional claim language, and nonce words.

Availability

Patently Strategic is available on all major podcasting directories, including Apple Podcasts, Spotify, and Google Podcasts. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.

Topic and guest participant requests

If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.​If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.

Resources

• Related content. For a deeper understanding of all things enablement, check out previous episodes: American Axle and IP Uncertainty for the Innovation Economy and Fortifying Life Science Patents: Eligibility and Enablement. This episode also focuses on distinctions between the “Spec” or “Specification” and the Claims of the American Axle application. For a deeper understanding on all of the parts of a patent, check out Season 1, Episode 9 on Patent Anatomy.
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• Slides. For the visual learners out there, we also like to make our presenter slides available for your reference.