Computer-Implemented Invention Patents: Federal Circuit Guidance, 2019 USPTO Guidelines on § 101 and § 112, and EPO Guidelines

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


Conducted on Thursday, October 17, 2019

Recorded event now available

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Program Materials

This CLE webinar will provide insights for patent counsel on the patentability of computer-implemented inventions. The panel will examine the 2019 USPTO guidance and recent case law. The panel will also discuss the new European Patent Office (EPO) guidance for computer-implemented inventions and patentability at EPO. The panel will offer insight for leveraging the guidance and case law to get an invention patented.

Description

The Federal Circuit has been routinely striking down purely functional claims for failing to recite patent-eligible subject matter. The Electric Power Group line of almost 20 cases is one such example where the Federal Circuit is finding functionally drafted claims as abstract.

When the USPTO announced its revised guidance for subject matter eligibility under § 101 in early 2019, it also issued a guidance document entitled, “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112.” The document addresses whether claims directed to computer-implemented inventions should be considered to be purely functional and/or indefinite under Section 112 of the Patent Act.

And in late 2018, the European Patent Office (EPO) published guidelines that address computer-implemented inventions. Under EPO guidelines, an essential part of claim drafting for computer-implemented inventions is analyzing whether a feature is technical.

Many computer-related claims are drafted functionally, and may fail to meet the requirements of §§ 101 and 112. Patent owners and their counsel must navigate the Federal Circuit case law as well as the USPTO guidance on both § 101 and § 112 to effectively protect their computer-related inventions. Patent counsel interested in European patent protection need also review and understand the new EPO Guidelines.

Listen as our authoritative panel of patent attorneys examines the patentability of computer-implemented inventions by reviewing the most important and recent Federal Circuit cases, the USPTO guidelines, and PTAB decisions applying those guidelines. The panel will also discuss the new EPO guidance and patentability of computer-implemented inventions at the EPO. The panel will then provide practical advice for satisfying § 101 and § 112 during prosecution or during adversarial proceedings.

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Outline

  1. Critical Federal Circuit § 101 cases involving computer-related inventions, including the Electric Power Group line of cases.
  2. USPTO's 2019 computer-implemented inventions guidance on § 101
  3. Recent PTAB cases applying the new guidance
  4. USPTO’s 2019 § 112 guidance for computer-implemented inventions
  5. EPO guidance and patentability of computer-implemented inventions at EPO
  6. Suggestions for drafting claims to pass muster under § 101 and avoid § 112 pitfalls and for surviving patent-eligibility challenges

Benefits

The panel will review these and other priority issues:

  • What insight does the USPTO guidance provide for claim drafting for computer-implemented inventions?
  • How can the EPO guidelines for computer-implemented inventions provide guidance for patent counsel seeking patents for computer-implemented inventions in the U.S.?
  • What are best practices for patent counsel to demonstrate patentability?

Faculty

Kiklis, Michael
Michael L. Kiklis

Member
Bass Berry & Sims

Mr. Kiklis focuses on PTAB litigation as well as district court patent litigation. He also handles Federal Circuit...  |  Read More

Kunin, Stephen
Stephen G. Kunin

Partner
Maier & Maier

Mr. Kunin represents clients in post-grant patent proceedings at the U.S. Patent and Trademark Office. He also...  |  Read More

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