What are the key considerations for computer-implemented inventions under 35 U.S.C. 112?
For computer-implemented inventions, there are several key considerations under 35 U.S.C. 112, particularly regarding written description and enablement requirements. The MPEP 2185 highlights:
“If the means- (or step-) plus-function limitation is computer-implemented, and the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention, see MPEP § 2161.01 and MPEP § 2181, subsection IV, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.”
Key considerations include:
- Providing a detailed disclosure of both the computer hardware and the algorithm used to perform the claimed function
- Ensuring the level of detail is sufficient for a person skilled in the art to understand how the inventor possessed the full scope of the claimed invention
- Avoiding mere reference to a general purpose computer without explaining how it is programmed to perform the claimed function
- Considering potential indefiniteness issues under 35 U.S.C. 112(b) if the algorithm is not clearly disclosed
Applicants should be particularly careful when using means-plus-function language for computer-implemented inventions to ensure compliance with all aspects of 35 U.S.C. 112.
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