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Description
The Federal Circuit has been routinely striking down purely functional claims for failing to recite patent-eligible subject matter. The Electric Power Group line of almost 20 cases is an example of the Federal Circuit finding functionally drafted claims as abstract.
When the USPTO announced its revised guidance for subject matter eligibility under Section 101 in 2019, it also issued a guidance document entitled "Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112." The document addresses whether claims directed to computer-implemented inventions should be considered purely functional or indefinite under Section 112 of the Patent Act.
Under EPO guidelines, an essential part of claim drafting for computer-implemented inventions is analyzing whether a feature is technical. However, there continues to be uncertainty about whether the patent offices and the courts consistently apply the technical character requirement.
Many computer-related claims are drafted functionally and may fail to meet the requirements of Sections 101 and 112. Patent owners and their counsel must navigate the Federal Circuit case law and USPTO guidance on Sections 101 and 112 to protect their computer-related inventions effectively. Patent counsel interested in European patent protection must also understand the EPO guidelines.
Listen as our authoritative panel of patent attorneys examines the patentability of computer-implemented inventions by reviewing the most critical and recent Federal Circuit cases, the USPTO guidelines, and PTAB decisions applying those guidelines. The panel will also discuss the new EPO guidance and patentability of computer-implemented inventions at the EPO. The panel will then provide practical advice for satisfying Sections 101 and 112 during prosecution or adversarial proceedings.
Presented By
Mr. Bahr specializes in all areas of patent practice. He previously served as the Deputy Commissioner for Patent Examination Policy at the USPTO. During his distinguished career at the USPTO, Mr. Bahr was involved in nearly all patent-related rulemaking since 1995. His involvement in patent rulemaking includes the changes to implement the American Inventors Protection Act of 1999 and the Leahy-Smith America Invents Act. Mr. Bahr provided administrative oversight and direction for the activities of the Office of Petitions, Office of Patent Legal Administration, Office of Patent Quality Assurance, Central Reexamination Unit, and Manual of Patent Examining Procedure staff during his tenure at the USPTO.
Mr. Kiklis leverages his 30 years of experience to represent clients in his areas of focus: trials at the PTAB and patent litigation. He has been involved in 100 PTAB trials. He also handles appeals to the Federal Circuit from his cases, having now been involved in over 20 appeals. He both enforces and defends the intellectual property rights of his clients and is often called upon to handle cases worth more than $100 million. Mr. Kiklis brings an in-depth understanding of the business and IP needs of his technology clients, which he developed from years of experience in virtually every kind of patent matter, from cross-licensing and due diligence to bet-the-company PTAB trials and patent litigation. He has an extensive background in computer science based on his six years of experience as a software developer at some of the computer industry’s leading companies. Mr. Kiklis provides significant and influential thought leadership as a frequent speaker and author on patent law, including patentable subject matter and PTAB trials. He is also the author of The Supreme Court on Patent Law, an 800-page treatise devoted to the Supreme Court’s patent law jurisprudence.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Live Online
On Demand
Date + Time
- event
Tuesday, February 4, 2025
- schedule
1:00 p.m. ET./10:00 a.m. PT
Outline
- Critical Federal Circuit Section 101 cases involving computer-related inventions
- USPTO's computer-implemented inventions guidance on Section 101
- PTAB cases applying the new guidance
- USPTO's Section 112 guidance for computer-implemented inventions
- EPO guidance and patentability of computer-implemented inventions at EPO
- Suggestions for drafting claims to pass muster under Section 101 and avoid Section 112 pitfalls and for surviving patent-eligibility challenges
Benefits
The panel will review these and other priority issues:
- What insight does the USPTO guidance provide for claim drafting for computer-implemented inventions?
- How can the EPO guidelines for computer-implemented inventions guide patent counsel seeking patents for computer-implemented inventions in the U.S.?
- What are best practices for patent counsel to demonstrate patentability?
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