February 05, 2020 Perspective

Recalibrating Functional Claiming: A Way Forward

George W. Jordan III

©2020. Published in Landslide, Vol. 12, No. 3, January/February 2020, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Functional claiming—often viewed as describing subject matter in terms of what it does (its function) rather than what it is (its “structure”)—has been frowned upon, feared, and misconceived by the patent bar for a very long time. Now is an opportune time to question the status quo of overbroad claiming, claim-defeating surprises, and linguistic impediments to legitimate lexicography. To identify the best way forward, two questions are key: What are the misconceptions, and what should be done to recalibrate functional claiming standards accordingly?

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