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Functional Claiming for Mechanical and Electrical Arts

Surviving 112(f), Navigating AI Challenges, and Disclosing Functional Basis to Meet Heightened Standard of Review

A live 90-minute premium CLE video webinar with interactive Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Thursday, June 20, 2024 (in 5 days)

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE course 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 L.L.C. (2015), 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. Further, practitioners are wrestling with the challenges of claiming artificial intelligence (AI)-related inventions.

Patent owners and their counsel must account for the heightened standards when drafting applications. In the Federal Circuit decision in American Axle v. Neapco (2020), Judge Chen noted that the lesson to patent drafters should now be clear: while not all functional claiming is the same, simply reciting a functional result at the point of novelty poses serious risks under Section 101.

Listen as our authoritative panel of patent attorneys discusses how the courts have addressed these 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. AI challenges – How to claim an AI-related invention and provide specification support in view of functional claiming challenges
  6. 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

Christensen, Dave
Dave S. Christensen

Partner
McCarter & English

Mr. Christensen’s IP practice focuses on assisting clients in protecting their inventions in both U.S. and...  |  Read More

Stadheim, Theresa
Theresa Stadheim

Special Counsel
Marshall, Gerstein & Borun

Ms. Stadheim focuses her practice on drafting and prosecuting patent applications within the areas of wireless...  |  Read More

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You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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