How can an applicant avoid or invoke 35 U.S.C. 112(f) interpretation?

Applicants have several options to either avoid or intentionally invoke 35 U.S.C. 112(f) interpretation for their claim limitations. According to the MPEP § 2181, applicants can take the following actions:

To avoid 35 U.S.C. 112(f) interpretation:

1. Amend the claim to remove the term “means” or “step” and recite sufficient structure to perform the claimed function.
2. Provide a showing that the claim limitation recites sufficient structure to perform the entire claimed function.

To invoke 35 U.S.C. 112(f) interpretation:

1. Use the term “means” or “step” coupled with functional language without reciting sufficient structure.
2. Use a generic placeholder (a non-structural term having no specific structural meaning) in place of “means,” coupled with functional language.
3. Ensure the specification provides corresponding structure, material, or acts for performing the claimed function.

The MPEP provides specific guidance:

“If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”

It’s important for applicants to carefully consider their claim language and specification support when deciding whether to invoke or avoid 35 U.S.C. 112(f) interpretation, as it can significantly impact the scope and interpretation of their claims.

To learn more:

• 35 U.S.C. 112(f)
• claim drafting
• means-plus-function
• patent application