USPTO Updates 112 Guidance: Presumption Shift of Functional Limitations

January 10, 2019
Post by Oliver P. Couture, Ph.D.

Recently, the United States Patent & Trademark Office (USPTO) has announced plans to update their guidance on functional claim language under 112 and will after a period of public input. This update will likely require a more detailed specification for functional claims or result in narrower claims.

Under the proposed 112 guidelines, which are aimed more specifically toward computer claims, functional language in claims is going to be presumed to be means plus function claims and analyzed for written description under 112(f). This is a change from before in that the key words, such as “means” or “step” do not need to be included for the claim to be considered a means plus function claim. To overcome the presumption, the practitioner must then either argue that they have included sufficient structure performing the function in the claim or amend to include sufficient structure in the claim.

Further, the guidelines say that support for the structures, for computer related claims, should be in the form of an algorithm, flow chart, mathematical equation, or the like. Also, specific hardware or data structures should also be described, such as a relational database or tables and how they interact with the algorithm. Reference to generic hardware, such as a processor, will not provide sufficient structural support for functional language.

While the guidelines do not address other areas, such as biotech, there is still an implication that additional structural written description support may be needed when trying to claim its function. For example, it may not be possible to claim an enzyme function or a promoter in generic terms without describing, if available, the active site of an enzyme or binding motifs of a promoter. Further, describing in the specification how mutagenesis may affect the function in more specific terms may also be required.

Given these new guidelines, the USPTO appears to be requiring more robust specifications to support functional claim language. This seems to be part of Director Lancu’s push for higher quality patents with more reliability in what is claimed by required a more robust specification or narrower claims.

Oliver P. Couture is an Intellectual Property Attorney in the Biotechnology & Chemical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit the MVS website or contact Oliver directly via email at

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