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 premium CLE webinar with Q&A


Conducted on Tuesday, May 19, 2020

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Program Materials

This CLE webinar will guide IP counsel on functional claiming in software patents and USPTO prosecution. The panel will examine recent court treatment and explain 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 subject to 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. Instead, the patentee must disclose the 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 explore the benefits and risks involved with using functional claims and offer best practices for surviving Section 112(f) and leveraging functional claims to maximize patent protection.

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Outline

  1. 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 Section 112(f) and functional claims for maximum patent protection

Benefits

The panel will review these and other crucial issues:

  • What has the impact of the Williamson decision been 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

Bell, Cory
Cory C. Bell

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Bell focuses on patent prosecution management, client counseling, post-grant practice, and litigation, with an...  |  Read More

Yu, Yi
Yi Yu, Ph.D.

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Dr. Yu practices all aspects of patent law, including patent litigation, post-grant proceedings, patent prosecution,...  |  Read More

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