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
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.
- 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
A registered patent attorney and electrical engineer, Mr. DeCarlo is actively involved in virtually all aspects of IP... | Read More
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.Close
Doris Johnson Hines
Finnegan Henderson Farabow Garrett & Dunner
Ms. Hines focuses her practice on patent litigation and her experience spans a wide range of technologies, but has... | Read More
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.Close