Promoting Patent Claim Clarity

Author(s): Peter S. Menell
Year: 2012

Abstract: Fuzzy patent claim boundaries undermine the functioning of the patent system by making it difficult for inventors and competitors to assess freedom to operate in many technology marketplaces, especially those relating to computer software and business methods. This commentary advocates the use of a detailed, electronic, claim application form to address this problem. By placing greater responsibility on patent applicants to delineate the precise boundaries of their claims -- by, for example, specifically indicating whether they intend to invoke the means-plus-function claim format by checking a box -- patent examiners could more easily evaluate what is being claimed, competitors could more easily know contested intellectual territory, and courts could more easily construe patent claims.

Keywords: patents, software patents, business method patents, claims