On Jan. 7, the U.S. Patent Office issued further guidance on the application of 35 U.S.C. Section 112 during examination of computer-implemented functional claim limitations (112 guidance). At the same time, the Patent Office set forth a “practical application” test that relaxes the subject matter eligibility requirement of 35 U.S.C. Section 101 (101 guidance). While subject matter eligibility has been routinely utilized within the past decade by the examining corps to reject patent applications, the 112 guidance issued in tandem with the 101 guidance signals a shift in emphasis.

By way of background, the Patent Office states: “Problems with functional claiming, i.e., when a claim is purely functional in nature rather than reciting with any specificity how the claimed function is achieved, can be effectively addressed using long-standing, well-understood principles under 35 U.S.C. 112.” The first part of the 112 guidance covers: invocation of means-plus-function claim interpretation under 35 U.SC Section 112(f); and indefiniteness of claimed functions under 35 U.S.C. Section 112(b). The second part of the 112 guidance covers: written description support of the claimed functions by algorithms under 35 U.S.C. Section 112(a); and enablement of the claimed functions under 35 U.S.C. Section 112(a). This aligns the examining corps in the direction of the courts which, in recent years, have heightened the requirements under Section 112 for computer-implemented functions.