The USPTO Addresses Limitations for «Means-Plus-Function» and «Step-Plus-Function» Claims

27 / 5 / 2024

On March 18, 2024, the United States Patent and Trademark Office (USPTO) has taken a step towards clearer patent records by issuing a memorandum to examiners on the importance of consistent analysis for "means-plus-function" and "step-plus-function" limitations. This clarifies what inventors need to include in their applications to secure broader patent protection.

To follow this, in a new Decision on Appeal issued by Appeals Review Panel (ARP) on May 21 2024, the USPTO clarified the Office’s position on means plus function claims — explaining that the specification need not describe statutory equivalents to satisfy the written description requirement.

Inventors don’t need to describe every possible equivalent, making this claim type more valuable. However, a clear and well-supported written description remains crucial. Broad claims must be supported by specific details in the application.

The ARP relied on the plain language of 35 U.S.C. § 112(f) to conclude that the specification need only describe the corresponding structure, not equivalents thereof, to satisfy the written description requirement. The ARP explained that “Section 112(f) clearly distinguishes between what must be ‘described in the specification’ and ‘equivalents.’”

This communication of the ARP emphasizes the need for careful claim drafting and a well-written specification to secure strong patent protection, especially in the biotech industry.

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