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Legal Aggregate

Let’s Go Back to Patenting the ‘Solution,’ Not the ‘Problem’

We already know the patent system is broken. And it desperately needs to be fixed: Patents affect and will continue to affect nearly every technology business or product we use. So for the next few weeks, Wired is running a special series of expert opinions – representing perspectives from academia to corporations to other organizations – proposing specific solutions to the patent problem.
Software and internet patents with extremely broad claims seem to be everywhere these days. The result’s been a raft of lawsuits against companies making any products in this space.
While patent law aims to promote innovation by giving inventors the exclusive right to their inventions, modern patent law pays far less attention to what the patentee actually invented than to what the patent claims. Such “claims” are the legal definition of the patent’s scope, and the lawyers drafting them have a natural tendency to broaden claims as much as possible to secure the strongest possible rights for clients.
Software and internet patents have seen more than their share of such overclaiming.
But this isn’t a new problem presented by new technology: Seventy-five years ago, patent lawyers were increasingly writing patent claims in broad functional terms, too. These patentees were claiming to own not a particular machine – or even a particular series of steps for achieving a particular goal – but the goal itself. The Supreme Court ultimately rejected such broad “functional claiming” as inconsistent with the purposes of the patent statute, and when Congress rewrote the Patent Act in 1952, it adopted a compromise position: Patentees could write claim language in functional terms but when they did so the patent would not cover the goal itself; only the particular means of implementing the goal described by the patentee (and equivalents thereof).
These “means-plus-function” claims permitted the patentee to use functional language to describe an element of their invention. But they did not permit the patentee to own the function itself … however implemented. To read the full piece go to: http://www.wired.com/opinion/2012/10/mark-lemley-functional-claiming/

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