Will Form 8865 Functional 2023-2024

My name is Teresa Starr time, and I'm going to give you a short presentation today about functional claiming from the perspective of software and electrical patent attorneys. When considering a software invention, we typically try to claim functions that are ed by the software. However, by functionally claiming your invention, you open yourself up to the possibility of indefiniteness rejections. My talk will show you how to avoid having your claims interpreted as functional claims and how to avoid indefinite rejections assuming that your claims do get interpreted as functional claims. First, I'd like to give a quick history of functional claiming. I usually start off with the case of Samuel Morse. As a ham radio operator, I find this case quite fascinating. Basically, the Supreme Court sustained Morse's right to a patent for a repeater apparatus used for transmitting messages by telegraph. But they explicitly denied another set of claims that tried to claim all uses of electromagnetism. I think Morse's case is significant with regards to the history of functional claiming because it indicates the Supreme Court's general wariness towards functional claiming, which is often defined as the practice of describing an invention according to what it does rather than what it is. A hundred years later, the case law moved from some telegraph poles in the sky to the oil wells deep in the bowels of the earth. The Halliburton vs. Walker case is often credited with giving us functional claiming because the Supreme Court held that a patent was invalid because Walker did not describe the invention, but used language describing what their apparatus will do rather than the physical characteristics or arrangement of the new apparatus. There was an uproar after the Halliburton case because many people thought that Walker should have been entitled to a patent....