This week USPTO Director David Kappos’ blog included a post discussing the Federal Circuit’s recent decision in Ariad Pharmaceuticals v. Eli Lilly. In the case, the Federal Circuit held that Section 112 of the Patent Act has a written description requirement that is separate and apart from the enablement requirement. Director Kappos’ post notes that in all applications reviewed from 2005-2010, the USPTO issued Section 112 rejections for the application’s asserted failure to contain an adequate written description.
In what may be a signal that the USPTO intends to apply Section 112 more aggressively to software claims, the post also states:
[T]he written description doctrine is particularly useful in examining claims that employ functional language, or that merely set forth a desired result without any indication of what achieves that result. . . . Thus, when confronted with functional claims, as with results obtained claims, I encourage examiners to carefully consider whether such claims — amended or original — are adequately supported by the specification.
Patent claims relating to software often use functional language, as the function of the software is typically what separates it from the prior art. For the patent practitioners reading this post — are you seeing an increased use of Section 112 rejections for software claims? I’m interested in reader comments on this subject.