To Configure or Not to Configure - that is the Question (or Navigating the Nuances of Functional Language in Patent Claims)
As a patent prosecution attorney, it has been interesting to observe the evolution of the landscape of functional claiming. Recent court decisions have significantly impacted how we draft and interpret patent claims, particularly when it comes to phrases like "configured to," "adapted to," and the deceptively simple "to."
The Shifting Sands of Functional Language
Times when we could rely on broad functional language to cast a wide net of protection have gone (or have at least been substantially curtailed). The courts have been increasingly strict in their interpretation of functional claim elements, and we need to adapt our strategies accordingly.
The Narrowing Scope of "Configured to" and "Adapted to"
Cases like In re Giannelli (2014) and Aspex Eyewear, Inc. v. Marchon Eyewear, Inc. (2012) have set a clear precedent: phrases like "configured to" and "adapted to" now present a real risk of being interpreted narrowly. These terms can and have been construed to imply that the claimed structure must be specifically designed or intended to perform the specified function, not merely capable of doing so.
The Deceptive Simplicity of "To"
While "configured to" and "adapted to" have been subject to narrower interpretations, the simple word "to" in functional claim language has generally been given a broader reading. Courts may be more likely to construe claims using "to" language as covering devices that are merely capable of performing the specified function.
However, this broader interpretation is a double-edged sword. While it may capture a wider range of potentially infringing products, it also, of course, makes claims more vulnerable to anticipation by prior art that is merely capable of performing the claimed function, even if not designed for that purpose.
Strategies for Effective Functional Claiming
Given these challenges, how can we draft patent claims that are both broad enough to provide meaningful protection and narrow enough to withstand scrutiny? Here are some strategies to consider:
1. Combine Structural and Functional Language: Instead of relying solely on functional language, combine it with clear structural elements. This approach can help define the scope of your claims more precisely while still leveraging the benefits of functional language.
2. Provide Strong Specification Support: Clear definitions and examples in the specification are crucial. They support your intended interpretation of functional language and help mitigate enablement issues. Don't shy away from providing multiple examples and embodiments.
Recommended by LinkedIn
3. Use Multiple Claim Strategies: Draft multiple independent claims with varying language. This provides flexibility during prosecution and litigation. Consider using broader "to" language in some claims and more specific "configured to" language in others.
4. Leverage Dependent Claims: Use more specific functional phrases in dependent claims to create a range of claim scopes. This can provide fallback positions if broader claims are challenged.
5. Consider the Technological Context: The interpretation of functional language can vary based on the specific context of the claim and the technology involved. Research how courts have interpreted similar language in your particular technical field.
6. Be Mindful of Means-Plus-Function: Be aware that certain functional language might trigger means-plus-function analysis under 35 U.S.C. § 112(f). If you're not intending to invoke means-plus-function, make sure your claims include sufficient structure to avoid this interpretation.
7. Address Potential Indefiniteness: Carefully review your functional language to ensure it clearly defines the scope of the invention. Vague or ambiguous functional language can lead to indefiniteness challenges under 35 U.S.C. § 112.
Looking Ahead: The Future of Functional Claiming
The legal landscape surrounding functional claiming continues to evolve, and what works today may not be as effective tomorrow. Here are some thoughts on future trends:
1. Increased Scrutiny: I expect courts and the USPTO to continue closely scrutinizing functional claim language. We may see even more precise guidelines emerge for interpreting terms like "configured to" and "adapted to."
2. AI and Machine Learning Challenges: As AI and machine learning technologies become more prevalent, we'll likely face new challenges in functionally claiming these complex, adaptive systems. Developing effective strategies for these technologies will be crucial.
3. Emphasis on Disclosure: Given the trend toward a narrower interpretation of functional language, I anticipate an increased emphasis on robust disclosure in patent specifications. Detailed descriptions of how claimed functions are achieved may become even more critical.
4. Alternative Claiming Strategies: We may see a rise in alternative claiming strategies that attempt to capture broad functional concepts without relying on traditional functional language.
While functional claiming has become more challenging in recent years, it remains a powerful tool in our patent prosecution arsenal. The key is to balance the breadth of protection with the need for clarity and enforceability. It's a challenging task, but it's what makes our work as patent prosecutors so intellectually stimulating and rewarding.