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

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

Conducted on Thursday, January 28, 2021

Recorded event now available

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Course Materials

This CLE course 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.


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 Section 101 in 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.

The EPO published guidelines in late 2018 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. However, there continues to be uncertainty as to the patent offices and the courts do not apply the requirement of a technical character consistently.

Many computer-related claims are drafted functionally and may fail to meet the requirements of Sections 101 and 112. Patent owners and their counsel must navigate the Federal Circuit case law as well as the USPTO guidance on both Section 101 and Section 112 to effectively protect their computer-related inventions. Patent counsel interested in European patent protection need to 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 Sections 101 and 112 during prosecution or during adversarial proceedings.



  1. Critical Federal Circuit Section 101 cases involving computer-related inventions
  2. USPTO's computer-implemented inventions guidance on Section 101
  3. Recent PTAB cases applying the new guidance
  4. USPTO’s Section 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 Section 101 and avoid Section 112 pitfalls and for surviving patent-eligibility challenges


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?


Kiklis, Michael
Michael L. Kiklis

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

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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