Means-Plus-Function Patent Claims: Treatment in Prosecution, Litigation, and Post-Grant Proceedings
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will provide patent counsel with an in-depth look at means-plus-function and/or functional claims, and the benefits and risks of using means-plus-function and/or functional claims given district court litigation, actual patent claims issued by the USPTO, and PTAB post-grant proceedings. The panel will offer their experiences and best practices to overcome the challenges of means-plus-function claims and leverage 112(f) and functional claims for maximum patent protection.
- Overview of the use of means-plus-function claims
- Means-plus-function claims in the electrical, computer, and mechanical fields, as well as in the life sciences, including potential as a strategy in light of the current stance in the U.S. on antibody genus claims as seen in Amgen v. Sanofi (Fed. Cir. 2021)
- Benefits of using means-plus-function claims
- Link to specification to avoid prior art and to avoid problems under 35 USC 112
- Provide an expansive claim scope when the specification may disclose only specific
- Include statutory equivalents to what is linked in the specification, but such statutory equivalents are considered in the context of literal infringement, not the doctrine of equivalents
- Provide added difficulty for third parties challenging patentability at the PTAB or validity in a district court
- Provide challenges to third-party design-around because of the specter of statutory equivalents
- Challenges/limits with applying means-plus-function claims
- Narrowness and linking in the specification
- Determining the scope of statutory equivalents
- USPTO treatment
- Functional claims
- When does 112(f) apply even though no "means" language is present?
- The use of nonce words
- Best practices for preparing, defending, and enforcing means-plus-function claims
The panel will review these and other noteworthy issues:
- What are the possibilities for means-plus-function claims in life science patents?
- What are the benefits and limitations of using means-plus-function patent claims in many technical fields?
Xiaoguang Michelle Gao, Ph.D., J.D.
Assistant General Patent Counsel
Eli Lilly and Company
Dr. Gao provides IP support for Lilly BioMedicines assets and the Lilly Biotechnology Center in San Diego. She... | Read More
Dr. Gao provides IP support for Lilly BioMedicines assets and the Lilly Biotechnology Center in San Diego. She obtained her Ph.D. in Molecular Biology from Northwestern University, and J.D. from the University of Illinois. Prior to joining Eli Lilly, she was a Patent Attorney at Novartis Institutes for BioMedical Research, where she supported ImmunoOncology and Neuroscience programs. She also worked for Fish & Richardson as an associate, focusing her practice on biopharma-related patent prosecution and litigation there.Close
Merck Sharp & Dohme
Ms. Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ. Her present responsibilities include... | Read More
Ms. Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ. Her present responsibilities include patent preparation, prosecution, and due diligence support for small molecule, vaccine, and antibody programs in human and animal health. She gained her initial legal patent experience while working at GlaxoSmithKline (GSK). She received her bachelor’s degree in Biomedical Engineering from Georgia Institute of Technology, and her J.D. from Delaware Law School - Widener University. She gained considerable bio-pharmaceutical research and development and vaccine process development experience while working as an engineer at Merck, GSK, and MedImmune.Close
Anthony M. Gutowski
Finnegan Henderson Farabow Garrett & Dunner
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent... | Read More
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations.Close
Thomas L. Irving
Finnegan Henderson Farabow Garrett & Dunner
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.Close