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

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Program Materials

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.

Description

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.

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Outline

  1. Review of the Williamson decision and how the courts have applied Williamson
  2. Functional claiming in software patents
  3. Benefits and risks involved with using functional claims
  4. Best practices for leveraging §112(f) and functional claims for maximum patent protection

Benefits

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?

Faculty

James J. DeCarlo
James J. DeCarlo

Shareholder
Greenberg Traurig

A registered patent attorney and electrical engineer, Mr. DeCarlo is actively involved in virtually all aspects of IP...  |  Read More

Doris Johnson Hines
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...  |  Read More

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