The Two Tiers of Equivalents—A Quick Reference
§ 112(f) Statutory Equivalents: Part of the literal claim scope. Structures must have been available at patent issuance. Accused device must perform the identical function recited in the claim. Test: Are structural differences “insubstantial”?
Doctrine of Equivalents: Extends beyond literal claim scope. Equivalence assessed at time of infringement (captures after-arising technology). Accused device need only perform “substantially the same” function. Test: Does it perform substantially the same function in substantially the same way to achieve substantially the same result?
Why this matters: A well-drafted MPF claim can protect against both known equivalents (through § 112(f)) and future innovations (through the doctrine of equivalents), providing broader coverage than either pathway alone.
Here’s an example. Suppose your company develops a formulation of a monoclonal antibody, AB-101, that binds epitope X resulting in the treatment of a disease. A structural claim might recite AB-101’s precise amino acid sequence. A broad functional genus claim might cover “a pharmaceutical formulation comprising an antibody that binds epitope X,” but after Amgen, that claim faces serious enablement challenges. An MPF claim takes a middle path: it claims “a formulation comprising a means for binding epitope X” but is construed to cover formulations comprising AB-101 and equivalent structures.
One caveat: statutory equivalents under § 112(f) must have existed at the time of patent issuance. The separate doctrine of equivalents evaluates equivalency at the time of infringement. MPF claims can potentially take advantage of both types of equivalents and capture structures known when the patent issued as well as after-arising structures. In rapidly evolving fields like biologics, that dual coverage can be valuable.
The USPTO’s Chamberlain decision: Clarity for MPF claim elements
What really caught my attention was Ex parte Chamberlain, the first decision by the newly established USPTO Appeals Review Panel (ARP) in May of 2024, which involves a Xencor patent application.
The decision underscored the strategic advantage of MPF limitations where genus claims are not practicable or are vulnerable under Amgen. The ARP, in holding that disclosure of a single antibody that performs the claimed function was sufficient to support an MPF claim, expressly held that disclosure of equivalent antibodies was not required, even though such antibodies would be within the literal scope of MPF claims.
Based on a single structure, an MPF claim can occupy space between a narrow “picture” claim and a vulnerable genus claim, potentially helping protect against biosimilars with minor modifications.
The risks you should understand
Like any patent strategy, MPF claims have limitations and requirements.
Prior art can anticipate an MPF limitation if it performs the identical function and discloses an equivalent structure, even if the structures aren’t identical.
The specification must both describe the corresponding structures and link them to the claimed function.
MPF claims also must satisfy the statute’s “combination” requirement. A claim reciting only one MPF element and no other structural elements is invalid, so MPF claims should include additional structural or functional elements beyond the MPF limitation itself.
Written description and enablement: The good news
Here’s the strength of MPF claims. The Chamberlain ARP determined that disclosure of a single structure capable of performing the MPF function is sufficient to support an MPF claim element. The specification need not disclose equivalents of the corresponding structure to satisfy definiteness or written description requirements.
Unlike the functional claims invalidated in Amgen, with an MPF claim, you’re not trying to claim every possible structure that performs a function. You’re claiming structures you’ve actually disclosed plus their equivalents that existed at the time of patent issuance. That’s a much more defensible position.
The Federal Circuit’s In re Xencor decision in March 2025 affirmed the ARP’s analysis of the MPF limitations, though the claim at issue ultimately failed because the “treating a patient” preamble lacked adequate support. The MPF limitations were accepted, highlighting that MPF claims aren’t subject to the same support requirements as broad functional genus claims.
Practical considerations for your portfolio
So how should you think about MPF claims in practice? First, MPF claims are complementary to structural claims, not a replacement. A well-constructed portfolio might include narrow structural claims covering your lead molecule, broader structural claims covering related variants, and MPF claims that extend coverage beyond the specific structures to their equivalents.
Second, invest in your specification. For MPF claims, you need to clearly disclose the corresponding structure and link it to the recited function. Consider including descriptions of multiple structures capable of the recited function to expand the field of potential equivalents during enforcement.
Third, think carefully about the function you recite. The function-way-result test used for equivalence analysis asks whether structures “perform the same function in substantially the same way to achieve substantially the same result.” A precisely defined function can help you capture equivalents while distinguishing prior art.
Looking ahead
Means-plus-function claiming isn’t a silver bullet. But in a post-Amgen world where broad functional genus claims face intense scrutiny, it offers a valuable middle path, particularly for biologics where structural complexity and unpredictability make broad claiming difficult. For pharmaceutical executives evaluating patent strategy, now is the time to ask whether MPF claims belong in your portfolio.