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Drafting and Defending Software Patents: Meeting Sections 102, 103, and 112 Requirements

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

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Thursday, July 22, 2021

Recorded event now available

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This CLE course will guide patent practitioners on drafting their software patent applications to comply with Section 102, 103, and 112 requirements and defending software patents from attacks under those statutory sections. The panel will discuss federal court guidance, prosecution guidelines, and offer litigation and prosecution strategies.


While practitioners emphasize meeting the Section 101 requirements, software patents, like other U.S. patents, must also meet the novelty, non-obviousness, and written description/enablement requirements of Sections 102, 103, and 112.

When preparing and prosecuting software-related inventions, prosecution counsel should be mindful of the challenges in meeting the non-obviousness requirement post-KSR v. Teleflex. Addressing an obviousness rejection is complex. Examiners regularly reject patent claims as obvious under Sect. 103 given a combination of prior art references applying guidance outlined in the MPEP. It is not enough to argue that the examiner has not established a prima facie case of obviousness or has not found a teaching, suggestion, or motivation to combine the prior art.

Also, the written description must establish that the applicants possessed the claimed invention by showing the relevant identifying characteristics of the claimed invention through drawings, flow charts, words, and in some cases, program listings submitted in computer-readable form. In particular, when means plus function limitations are employed, sufficient corresponding structure or specific algorithms for each embodiment are needed.

Listen as our authoritative panel of patent attorneys reviews recent court and PTAB guidance. The panel will provide best practices for drafting patent applications/claims to meet Section 102, 103, and 112 requirements and minimize the likelihood of rejections.



  1. Challenges in drafting software patent specifications
  2. Best practices for drafting software patent claims
  3. Guidance from Federal Circuit and PTAB decisions for meeting requirements
    1. Novelty
    2. Non-obviousness
    3. Written description
    4. Enablement
    5. Claim definiteness
  4. Defending Section 102, 103, and 112 challenges at the district court and PTAB


The panel will review these and other high priority issues:

  • What are the hurdles for patent counsel to demonstrate a software-related claim is novel and non-obvious during prosecution?
  • What is the best way to defend against Section 102, 103, or 112 attacks at the district court and the PTAB?


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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