Professor Lemley has posted a paper suggesting that if we more strictly enforced 35 USC 112(f), the interpretation of means for language, then much of the problem with software patents would be eliminated.
His paper can be found here: Software patents and the return of functional claiming.
His basic argument is that most software claims are means-for claims, because they use the phrasing “a computer system programmed to.” Means-for claims are construed to only “cover the corresponding structure, material or acts described in the specification and equivalents thereof.” The courts have interpreted means-for equivalents narrowly. Professor Lemley hopes to require the inclusion of algorithm/code/pseudocode in the Specification, and have the claim scope be limited to that code, and its equivalents.
Of course, this would likely invalidate most existing software patents which do not include algorithms. It would also lead to an immediate change in claim formats, to avoid the language which was interpreted to trigger the “means for” type analysis. In this, Professor Lemley appears to take a “magic language” based approach to a problem that is not the result of poor language choices. The primary problems with software patents are lack of rigorous prior art searching and the incredible expense of responding to even an unreasonable lawsuit. Even if Professor Lemley’s interpretation were adopted by the courts, it would be a stopgap measure, until patent owners could rephrase their claims to once again avoid limiting the claims to the specific structures/algorithms described in the Specification.
Greg Aharonian, a perennial critic of the patent system, does not agree with Professor Lemley’s thesis, and takes apart his argument in some detail. He has given me permission to post his response here. Be aware, he uses quite colorful language.Continue reading “A response to Professor Lemley’s Paper on Functional Claiming to Limit Software Patents”