Drafting and Defending Software Patents: Meeting Sections 102, 103, and 112 Requirements

Description

While practitioners emphasize meeting the Section 101 requirements, software patents, like other U.S. patents, must also meet the novelty, non-obviousness, and written description/enablement requirements of Sections 102, 103, and 112.

When preparing and prosecuting software-related inventions, prosecution counsel should be mindful of the challenges in meeting the non-obviousness requirement post-KSR v. Teleflex. Addressing an obviousness rejection is complex. Examiners regularly reject patent claims as obvious under Sect. 103 given a combination of prior art references applying guidance outlined in the MPEP. It is not enough to argue that the examiner has not established a prima facie case of obviousness or has not found a teaching, suggestion, or motivation to combine the prior art.

Also, the written description must establish that the applicants possessed the claimed invention by showing the relevant identifying characteristics of the claimed invention through drawings, flow charts, words, and in some cases, program listings submitted in computer-readable form. In particular, when means plus function limitations are employed, sufficient corresponding structure or specific algorithms for each embodiment are needed.

Listen as our authoritative panel of patent attorneys reviews recent court and PTAB guidance. The panel will provide best practices for drafting patent applications/claims to meet Section 102, 103, and 112 requirements and minimize the likelihood of rejections.