Functional Claiming for Software Patents: Leveraging Recent Court Treatment
Surviving 112(f) and Disclosing Functional Basis for Software to Meet Heightened Standard of Review
Recording of a 90-minute CLE webinar with Q&A
Conducted on Thursday, February 23, 2017
Recorded event now available
This CLE webinar will provide guidance to IP counsel on functional claiming in software patents and in USPTO prosecution. The panel will examine recent court treatment and how to navigate the issue of functionality given the uncertainties in the prosecution and litigation contexts.
In Williamson v. Citrix Online, the Federal Circuit issued a decision relating to means-plus-function claims. This decision is having a dramatic impact on interpreting functional claim terms, regardless of whether claim language is being construed in prosecution, post-grant challenges at the PTAB, or district court litigation.
Since Williamson, patentees must meet a heightened standard of review by sufficiently disclosing the functional basis for software. It is not enough to claim a general purpose computer as the structure performing the function. Rather, the patentee must disclose the technical algorithm that performs the stated function.
Listen as our authoritative panel of patent attorneys provides a quick review of the Williamson decision, discusses how the courts have applied the Williamson decision, and then examines functional claiming in the context of software patents. The panel will examine the benefits and risks involved with using functional claims and offer best practices for surviving §112(f) and leveraging functional claims to maximize patent protection.
- Review of the Williamson decision and how the courts have applied Williamson
- Functional claiming in software patents
- Benefits and risks involved with using functional claims
- Best practices for leveraging §112(f) and functional claims for maximum patent protection
The panel will review these and other key issues:
- What impact will the Williamson decision have on functional claim interpretation for software patents?
- What are the benefits and limitations of using functional claims for software patents?
- What are the lessons from recent decisions regarding functionality in software patents?
James J. DeCarlo, Shareholder
A registered patent attorney and electrical engineer, Mr. DeCarlo is actively involved in virtually all aspects of IP counseling. His experience includes litigating patent matters in district courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of IP assets and drafting infringement, validity and freedom to operate opinions. Mr. DeCarlo also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in numerous areas.
Doris Johnson Hines, Partner
Finnegan Henderson Farabow Garrett & Dunner,
Ms. Hines focuses her practice on patent litigation and her experience spans a wide range of technologies, but has focused primarily in the electrical area on semiconductor, Internet, electronics, smartphone, and telecommunications technologies. She regularly represents clients in mediations and assists in licensing negotiations. She advises clients on strategic patent prosecution, monetization strategies for issued patents, and patent damages, including issues relating to standard essential patents and fair, reasonable, and non-discriminatory (FRAND) terms.
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I liked the practical insights, particularly when tied to cases the presenters had worked on.
Strafford provided an enthusiastic presentation that focused on patent practice, not theory.
David H. Vance
Vance Intellectual Property
The seminar was interesting and laid out the subject matter in a clear and organized manner.
The content of the program was extremely relevant to my current practice.
Katten Muchin Rosenman
It was a very good presentation of complex material, managed in an understandable format. The information will be useful in my practice.
Jay H. McDowell
Patent Law Advisory Board
Fulbright & Jaworski
Winston & Strawn
Stroock & Stroock & Lavan
Feinberg Day Alberti & Thompson
Senior IP Counsel
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