Patent Prosecution Practice Tip: No Need to Articulate Advantages Within Claim

On April 30, the Federal Circuit issued a precedential opinion in Uniloc v. LG Electronics, concerning claims to a software invention for a local communication system that reduced latency for parked secondary systems, e.g., when connecting a local wireless peripheral device to a computer.

Although the court’s reasoning itself is not of particular note, in concluding that the claims were in fact patent-eligible, the court stated that “[t]o the extent [defendant] LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error. Claims need not articulate the advantages of the claimed combinations to be eligible” (emphasis added). Given that some patent examiners require applicants to recite the advantage expressly within the claim, the court’s opinion provides applicants with a succinct, unambiguous, authoritative quotation to use in rebuttal.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.