BarbriSFCourseDetails
  1. keyboard_arrow_leftBack

Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, February 4, 2025

  • schedule Time

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

  • timer Program Length

    90 minutes

Credit Information

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

$347.00
CLE
ALL

This CLE course will guide patent counsel on the patentability of computer-implemented inventions. The panel will examine the USPTO guidance, recent case law, and the European Patent Office (EPO) guidance for computer-implemented inventions and patentability. The panel will offer insight on leveraging the guidance and case law to obtain a patent.

Faculty

Michael L. Kiklis
Founder
Kiklis Law Firm, PLLC

Mr. Kiklis focuses on PTAB litigation as well as district court patent litigation. He also handles Federal Circuit appeals from his cases. With an extensive background in computer science, his technological focus is on software patent matters. Mr. Kiklis frequently handles high stakes matters, having been involved in several cases in which over $1 billion was at stake.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio
Robert W. Bahr
Partner
Maier & Maier, PLLC

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, he 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. He 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.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio

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.

Outline

  1. Critical Federal Circuit Section 101 cases involving computer-related inventions
  2. USPTO's computer-implemented inventions guidance on Section 101 
  3. PTAB cases applying the new guidance
  4. USPTO's Section 112 guidance for computer-implemented inventions
  5. EPO guidance and patentability of computer-implemented inventions at EPO
  6. 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?