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ARTICLE · 29 JULY 2015

Means For Invalidating A Patent: Lessons From The Eon Corp v. AT&T Decision

It is very important to provide adequate disclosure when using "means-plus-function" claims in a U.S. patent, particularly in the field of software.

CanadaIntellectual Property

It is very important to provide adequate disclosure when using "means-plus-function" claims in a U.S. patent, particularly in the field of software. "Means-plus-function" claims include elements that are defined in a functional (as opposed to structural) manner, such as "means for tying a shoe", and can be useful as long as they are carefully prepared. In particular, "means" claims require the disclosure of specific structural examples in the body of the patent that are used to interpret the functional elements.1

One further issue is that this requirement is often confused with the requirement that the patent include enabling disclosure.2 Enabling disclosure generally relates to whether an individual of ordinary skill in the art (i.e., a suitable engineer or programmer) could make or use the invention. On the other hand, providing adequate disclosure of corresponding structures is important, even where such structures may be routine, since this is necessary to

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