Photo of Steven Jensen

Steven is a Member in the firm’s Boston office. His practice focuses on obtaining and enforcing U.S. and international patents in the mechanical, electrical, computer, and materials science arts. Steven has actively prosecuted and managed substantial patent portfolios for various companies in high technology fields, including semiconductor manufacturing and consumer electronics. He is a member of the American Intellectual Property Law Association and the Boston Bar Association.

Functional Claiming in Software Patents

Software patents are generally directed to a sequence of steps or rules, i.e., an algorithm, performed by a computer programmed to carry out the algorithm.  Because algorithms are inherently functional in nature, software patent claims are frequently written using functional, as opposed to structural, terms.  In many cases, software claims recite vague sounding “units” or “modules” to carry out steps of the algorithm.

Consequently, software claims are often subject to the means-plus-function guidelines set forth in 35 U.S.C. §112(f), which require that the specification describes structure to perform the claimed function.  Although a computer-implemented algorithm is necessarily executed using structural parts—e.g., a microprocessor, a memory, etc.—a description of such parts in the specification, on its own, may not suffice as the structure needed to satisfy 35 U.S.C. §112(f) and protect the claims from indefiniteness. Continue Reading With Software Patents and Means-Plus-Function, “Structure” Takes On a New Meaning

What is Official Notice?

MPEP §2103(VI) states that when a rejection is imposed, the “Office action should clearly communicate the findings, conclusions and reasons which support them.”  Examiners commonly satisfy this requirement by citing one or more prior art references allegedly teaching each of the limitations of a claim.

Occasionally, however, an Examiner may eschew documentary evidence on the record and instead opt to rely solely on his or her own opinion in support of a rejection.  In such a situation, the Examiner might “take official notice” to establish the veracity of an assertion made by the Examiner that a particular claim limitation is well-known in the art.

Official notice allows an Examiner to support a rejection by making a declaration of facts not in the record, but instead based on “common knowledge” in the art, according to MPEP §2144.03.  But only in very limited circumstances is taking official notice without documentary evidence to support an Examiner’s conclusion permissible.

Continue Reading Rules and Practice Tips Regarding Official Notice at the U.S. Patent and Trademark Office

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection.  This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.

There are two predominate types of patents: 1) utility patents that protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” and 2) design patents that protect “any new, original and ornamental design for an article of manufacture.”  While both types of patents provide valuable IP protection, utility patent applications outnumber design patent applications by nearly 7 to 1 (e.g., 288,335 utility patent applications were filed in the U.S. in 2015 vs. 39,097 design patent applications).

Continue Reading To Seek Design Protection or Not, That is the Question!