Means Plus Function Patent Claims: New USPTO Guidance, Implications for Patent Counsel and Applicants

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Monday, May 20, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide patent counsel on means-plus-function (MPF) claims and the USPTO's recent guidance. The panel will discuss the implications of the guidance for patent counsel and applicants. The panel will offer best practices to overcome the challenges of MPF claims and leverage 112(f) and functional claims.
Faculty

Mr. Irving has 47 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.

Ms. Brougher is a patent attorney who focuses on all aspects of services related to patents in the areas of biotechnology, pharmaceuticals and medical devices, including patentability opinions, due diligence, patent drafting, domestic and foreign patent prosecution, development and management of patent portfolios, and general client counseling during all phases of a product’s lifecycle, from concept to commercialization.
Her patent experience covers a variety of complex and innovative inventions involving small molecule drugs, biologics, cell-based technologies, compositions, drug formulations and drug delivery systems, immunotherapeutics, medical devices, diagnostic tests, nanotechnology, and immunology, particularly vaccines and antibodies. Ms. Brougher also has experience counseling clients on the Hatch-Waxman Act and is monitoring developments involving biosimilars under the Biologics Price Competition and Innovation Act.

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.
Description
In March 2024, the USPTO issued guidance for examining patent claims with MPF and step-plus-function limitations under Section 112(f). The guidance discussed interpretation of MPF claims under Section 112(f), which permits drafters to "recite a function in a claim and rely on the specification for the corresponding structure, material, or acts that perform the function and equivalents to the disclosed structure, material, or acts."
The guidance instructs examiners to use a three-prong test to determine if Section 112(f) is involved. The guidance highlights claim interpretation and the importance of a clear record as well as the need to provide sufficient support to meet the requirements of definiteness, written description, and enablement.
Nearly all technological fields use MPF claiming. MPF claims can provide more protection for patent applicants than other claims. Counsel should keep in mind how claims are framed under Section 112(f), especially with MPF claims. It is essential for patent counsel to include adequate and precise descriptions in the patent specification to support the claimed functions.
Listen as our authoritative panel of patent attorneys examines MPF claims and the USPTO's recent guidance. The panel will discuss the implications of the guidance for patent counsel and applicants. The panel will offer best practices to overcome the challenges of MPF claims and leverage 112(f) and functional claims.
Outline
- MPF claims and the benefits of using them
- USPTO guidance
- Section 112(f) three-prong analysis
- Best practices
Benefits
The panel will review these and other noteworthy issues:
- What are the benefits and limitations of using MPF patent claims?
- What are the potential implications of the USPTO's decision in Xencor?
- What are the alternatives if MPF is not available?
Unlimited access to premium CLE courses:
- Annual access
- Available live and on-demand
- Best for attorneys and legal professionals
Unlimited access to premium CPE courses.:
- Annual access
- Available live and on-demand
- Best for CPAs and tax professionals
Unlimited access to premium CLE, CPE, Professional Skills and Practice-Ready courses.:
- Annual access
- Available live and on-demand
- Best for legal, accounting, and tax professionals
Related Courses

Means-Plus-Function Patent Claims Following Xencor: Preamble, Written Description, and More
Thursday, May 15, 2025
1:00 p.m. ET./10:00 a.m. PT

Patent Design Arounds: Minimizing Risk of Infringement and Reducing Likelihood of Competitor Design Arounds
Wednesday, May 14, 2025
1:00 p.m. ET./10:00 a.m. PT