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  • videocam On-Demand
  • card_travel Patent
  • schedule 90 minutes

Software Patents: Enablement, Definiteness, Means Plus Function, Step Plus Function, On Sale, Public Use

$347.00

This course is $0 with these passes:

CLE
ALL
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Description

Software inventions face some challenging issues from § 112, including written description, enablement, definiteness, means plus function, and step plus function. For example, computer-implemented functional claim limitations may invoke § 112(f) when claiming a “means” or “step” for performing a function without reciting the specific structure, material, or acts that perform the function. When § 112(f) is invoked, the Federal Circuit has consistently required that the specification must disclose an algorithm for performing the claimed function. Failure to do so may render the claim invalid.

The circumstances under which a software claim invokes § 112(f) has evolved. In 2015, the Federal Circuit’s Williamson decision eliminated the heightened presumption against applicability of § 112(f) when the claim limitation lacks the word “means.” Also, in January 2019, the USPTO issued § 112(f) guidance. And, in June 2019, the Senate Judiciary Committee’s Subcommittee on Intellectual Property heard testimony regarding a draft bill that would, among other things, expand the applicability of § 112(f) by eliminating the current “means” language, which proponents have argued will rein in overbroad claims. Accordingly, § 112(f) will continue for the foreseeable future to impact applicants in prosecution as well as patent owners in post-grant proceedings and litigation. Knowing when claims may invoke § 112(f) is critical to avoid a narrow construction or, worse, invalidity.

Further, the on-sale and public use bars raise unique issues for software inventions. Patent counsel must understand how these bars are applied to software.

Listen as our authoritative panel of patent attorneys discusses software patents and the issues of enablement, definiteness, means plus function, step plus function, the on sale bar, and the public use bar. The panel will review key Federal Circuit cases, the USPTO guidelines, and PTAB decisions and provide practical advice.

Presented By

Shu Chen
Attorney
Bass Berry & Sims Plc

Dr. Chen provides strategic patent counseling services, manages portfolios of patents and patent applications, helps clients develop strategies for building patent portfolios, helps clients identify patentable inventions, and prepares and prosecutes patent applications, both in the U.S. and internationally. She covers a wide range of computer-related technologies. She has substantial patent experience in distributed system architectures, Internet and client-server systems, search engines, cloud architectures and applications, anti-virus and data encryption techniques, telecommunications, medical devices, automobiles and mechanical devices.

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Michael L. Kiklis
Founder
Kiklis Law Firm, PLLC

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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Michael Kiklis
Member
Bass Berry & Sims Plc
Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Thursday, March 12, 2020

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. Meeting enablement requirements
  2. Meeting definiteness requirements
  3. Means plus function and step plush function
  4. On sale bar
  5. Public use bar
  6. Best practices for software patent prosecution

The panel will review these and other noteworthy issues:

  • How will claims invoke § 112(f) and what are the benefits and pitfalls of using means-plus-function or step-plus-function software patent claims?
  • What steps can patent counsel take to meet the enablement requirement and withstand invalidity/unpatentability challenges based on written description and enablement?
  • How are courts and the PTAB treating the on-sale bar and the public-use bar for software patents?