Say you experience Patent Office resistance to your “means” claim language reciting a computer-readable element.  What precious resources might you devote to consideration of options or continuing?  How about investing in the substitute language “instructions”?  The review process undertaken may influence your answer.  In this spirit, a non-exhaustive discussion of a sample workaround of claim language is presented.

Introduction

Patent prosecution involves interaction with the Patent Office after the filing of a patent application.  The prosecution of the patent application seeks to obtain allowance and issuance of a patent, often involving negotiation with a Patent Examiner over the patent claim language.  The major parts of the patent application in electrical, software, and mechanical technologies include a specification of detailed text with accompanying drawings together enabling practice of the invention, plus claims supported by the specification and drawings.  The claims define the prospective patent rights.

The language of the claims in part serves to distinguish the prior art.  In another aspect, the claim language serves to present the invention in a patent-eligible form, as patentable subject matter.  The Patent Examiner can raise objections and rejections such as to the claim language in view of the prior art, as well as over the subject matter sought to be claimed.  In response, the Patent Owner often through a Patent Lawyer might present arguments and/or claim amendments supportable by the patent application as filed.

Apparatus, system, method, process, and article claims are examples of claim types employable for prospective patent protection of software-related inventions.  A sample format among a variety of formats that has been employed is:  “means for performing a function”.  The “means” format may entail having sufficient disclosure in the specification and drawings of exemplary structure corresponding to the “means”.

Scenario

A Patent Owner entrusts a Patent Lawyer to conduct an Interview with a Patent Examiner who is handling a patent application.

Cast

Patent Owner:  Seeking patent protection.  Responsible for legal fees to the Patent Lawyer and government fees to the Patent Office.

Patent Lawyer:  Represents the Patent Owner before the Patent Office.  Sample constraints include time, budget, and directives.

Patent Examiner:  Substantive contact for examination in the Patent Office.  Sample variables include receptiveness and engageability from their past experiences that may have been positive, negative, or disjointed.

Workaround

In an Office Action, the Patent Examiner had rejected apparatus and article claims to a software-related invention as directed to unpatentable subject matter.  Only the article claims had the “means” format.  For illustrative purposes, the “means” workaround in the article claims is discussed; a different workaround arose for the apparatus claims, and for prior art rejection of all the claims, including method claims.  In the following illustrative claim amendments, additions are highlighted in ALL CAPS plus –dashes–, and deletions are highlighted with [bracketing].

[means ]–INSTRUCTIONS –in one or more computer-readable signal-bearing media for invoking a graphical user interface….

This substitution of –instructions– for “means” may appear straightforward.  Where “means” had already been rejected, it remained to be determined whether the Examiner would wish a more pronounced change in language or technical concept to gain approval.

Interview

The Interview between the Patent Examiner and Patent Lawyer skillfully undertaken allows an exchange of opinions and perspectives.  The Patent Lawyer may seek to reach a tipping point of collaborative dialog with the Patent Examiner.  Bald argument can be distracting, distancing, and derailing.  Sensitivity to the Patent Examiner’s potential postures of deferred consideration or silence helps the Patent Lawyer’s tactfulness.  Nurtured and rapid rapport, objection-handling, and elicitation of perspective from the Patent Examiner may promote the Patent Lawyer’s success.  Sizing up the situation, the Patent Lawyer may contemporaneously select a strategy and drive toward an agreement.

Arriving at an agreement on claim amendments gives greater confidence that resources subsequently invested in preparation and filing of a formal written Response to the Office Action would advance the prosecution.  The arrival at agreement can depend on two-way communication and active listening.  Probing for mutually acceptable language needs to operate within the rules of the patent process.  Abrupt changes occur in some years on specific rules, though a deep history transcends many areas.

The sample workaround of the “instructions” substitution met with agreement.  The pre-approval from the Examiner provided greater confidence in the next step.  Strategic steering of the dialog also provided prospectively greater alignment of the claim language with the Patent Owner’s business interests than might a claim strategy developed in isolation from sampling and feedback from the Patent Examiner.  The communication laid a path for the formal Response filing to be officially reviewed by the Patent Examiner.

Text Copyright © 2008 Bob Brill

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