Means-Plus-Function Patent Claims After the AIA

Assessing Benefits and Risks, Surviving AIA's PGRs, IPRs and Reissue

Recording of a 90-minute CLE webinar with Q&A


Conducted on Monday, December 16, 2013
Recorded event now available


This CLE webinar will provide patent counsel with a review of the benefits and limitations in using means-plus-function claims in pursuing a patent. The panel will offer their experiences and best practices for overcoming the challenges of means-plus-function claims and leveraging Section 112(f) (aka 112, 6).

Description

The scope of a means-plus-function patent claim's application includes mechanical, electric, food and other chemical formulation technology, and life sciences. However, counsel must weigh the benefits and risks because patent protection is limited to the subject matter in the function’s specification and statutory equivalents thereof, also taking into account the possible application of the Doctrine of Equivalent.

Further, the USPTO examiners often struggle with means-plus-function claims, leading the USPTO to recently issue new guidelines to its examination corps. Section 112, 6 (112(f) claims, even if in litigation, could get pulled back into the Patent Trial and Appeal Board for inter partes review (IPR), post-grant review (PGR), or reexamination.  Under the AIA, IPR and PGR so far seem weighted in favor of challengers, increasing the pressure on patentees to avoid or survive those post issuance proceedings.

Patent counsel must understand the benefits and limitations involved when making means-plus-function claims. Our panel will explain how careful means-plus-function claim drafting can provide substantial patent coverage.

Listen as our authoritative panel of patent attorneys provides a brief overview of how means-plus-function claims are used in different fields. The panel will examine the benefits and risks involved with using means-plus-function claims and will offer best practices for leveraging 112(f) (formerly 112 para. 6) and reducing the likelihood of cancellation post grant in the PGRs and IPRs of AIA.

Outline

  1. Brief overview of the use of means-plus-function claims
    1. Mechanical
    2. Electrical
    3. Food and chemical formulation technology
    4. Pharma
  2. Benefits of using the means-plus-function claims
    1. Link to specification to avoid prior art
    2. Statutory equivalents to what is linked to the specification
  3. Challenges/limits with applying means-plus-function claims
    1. Narrowness and linking to the specification
    2. Defining statutory equivalents
    3. USPTO treatment
  4. Best practices for addressing those changes in patent licensing
    1. Real life examples
    2. Linking

Benefits

The panel will review these and other key questions:

  • What are the benefits of using means-plus-function patent claims?
  • What are the limitations of means-plus-function claims?
  • What practices can counsel employ to leverage 112(f) to increase the likelihood of surviving post-grant review, inter partes review and reissue?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

John Mulcahy
Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

Mr. Mulcahy focuses on patent litigation before both the ITC and federal district courts. His litigation experience includes examining expert witnesses at deposition and trial; preparing Markman, summary judgment, and various post-trial motions; and participating in settlement negotiations. He also has extensive experience in the strategic use of reexaminations in litigation and has filed numerous successful requests. He has successfully argued before the PTAB, and has filed and prosecuted numerous applications.

Dr. Amanda Murphy
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.

Ordering

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