by S. Laura Chung
MAY YOU ALL HAVE A JOYFUL SUMMER!
Using a means-plus-function limitation in a U.S. patent application may have some unintended consequences to the interpretation of a patent claim in U.S. courts. In this article, we examine when 35 USC § 112, ¶6, is applied, and what are some of the implications of having 35 USC § 112, ¶6, applied.
- In its relevant part, 35 USC § 112, ¶6, states the following:
- An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof
When is 35 USC §112, ¶6, invoked?
The use of the term “means” in a claim raises a rebuttable presumption that the recited element is a meansplus-function limitation under 35 U.S.C. § 112, ¶6. However, this presumption can be rebutted by showing that the element specifies “structure, material, or acts.” The “mere incantation of the word ‘means’ in a clause reciting predominantly structure cannot evoke 112, ¶6.” York Products, Inc. v. Central Family Farm, 99 F.3d 1568 (Fed. Cir. 1996). Further, even in the absence of the use of the term “means,” an element that recites a function without reciting a structure, material, or acts may be considered a means-plus-function limitation.–click here to read more—