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Promoting Patent Claim Clarity

Solutions to the Software Patent Problem, Santa Clara Law Conference – November 16, 2012 (Forthcoming)

UC Berkeley Public Law Research Paper No. 2171287

3 Pages Posted: 7 Nov 2012  

Peter S. Menell

University of California, Berkeley - School of Law

Date Written: November 1, 2012

Abstract

Fuzzy patent claim boundaries undermine the functioning of the patent system by making it difficult for inventors and competitors to assess freedom to operate in many technology marketplaces, especially those relating to computer software and business methods. This commentary advocates the use of a detailed, electronic, claim application form to address this problem. By placing greater responsibility on patent applicants to delineate the precise boundaries of their claims -- by, for example, specifically indicating whether they intend to invoke the means-plus-function claim format by checking a box -- patent examiners could more easily evaluate what is being claimed, competitors could more easily know contested intellectual territory, and courts could more easily construe patent claims.

Keywords: patents, software patents, business method patents, claims

JEL Classification: K11, K19

Suggested Citation

Menell, Peter S., Promoting Patent Claim Clarity (November 1, 2012). Solutions to the Software Patent Problem, Santa Clara Law Conference – November 16, 2012 (Forthcoming); UC Berkeley Public Law Research Paper No. 2171287. Available at SSRN: https://ssrn.com/abstract=2171287

Peter S. Menell (Contact Author)

University of California, Berkeley - School of Law ( email )

215 Boalt Hall
Berkeley, CA 94720-7200
United States

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