Computer-Implemented Invention Patents: Federal Circuit Guidance, USPTO Guidance on Sections 101 and 112, EPO Guidance

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.