Functional Claiming for Mechanical and Electrical Arts

Surviving 112(f) and Disclosing Functional Basis to Meet Heightened Standard of Review

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

Conducted on Thursday, March 7, 2019

Recorded event now available

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Program Materials

This CLE webinar will guide IP counsel on functional claiming in electrical and mechanical arts patents and USPTO prosecution. The panel will examine recent court treatment and how to navigate the issue of functionality given the uncertainties in the context of prosecution and litigation.

Description

In Williamson v. Citrix Online LLC, the Federal Circuit issued a decision relating to means-plus-function claims. This decision has had a dramatic impact on interpreting functional claim terms, regardless of whether construing claim language in prosecution, post-grant challenges at the PTAB, or district court litigation.

Patent law permits functional claiming in Section 112(f). The applicant must provide sufficient structure in the specification to perform any functional limitations. Since Williamson, patentees must meet a heightened standard of review by sufficiently disclosing the functional basis for patents in the electrical or mechanical arts.

Patent owners and their counsel must account for the heightened standards when drafting applications.

Listen as our authoritative panel of patent attorneys provides a brief overview of the Williamson decision and discusses how the courts have addressed the issues in recent decisions. The panel will examine functional claiming in the context of patents in the mechanical and electrical arts. The panel will explore the benefits and risks involved with using functional claims and offer best practices for leveraging Section 112(f) and functional claims to maximize patent protection.

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Outline

  1. Review of the recent decisions and how the courts have applied them
  2. Functional claiming in the mechanical arts
  3. Functional claiming in the electrical arts
  4. Benefits and risks involved with using functional claims
  5. Best practices for leveraging Section 112(f) and functional claims for maximum patent protection

Benefits

The panel will review these and other key issues:

  • What are the risks of a 112(f) interpretation for the patentee?
  • What is sufficient structure for supporting 112(f) claims?
  • What are best practices for drafting specifications to support functional claims?

Faculty

Hines, Doris
Doris Johnson Hines
Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Hines focuses her practice on patent litigation and has led teams in U.S. district courts, the U.S. International...  |  Read More

Stadheim, Theresa
Theresa Stadheim
Principal
Schwegman Lundberg Woessner

Ms. Stadheim is a registered patent attorney. Her practice involves writing and prosecuting patent applications in...  |  Read More

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