Functional Claiming for Mechanical and Electrical Arts

Description

In Williamson v. Citrix Online L.L.C. (2015), the Federal Circuit issued a decision relating to means-plus-function claims. This decision has had a dramatic impact on interpreting functional claim terms, regardless of whether construing claim language in prosecution, post-grant challenges at the PTAB, or district court litigation.

Patent law permits functional claiming in Section 112(f). The applicant must provide sufficient structure in the specification to perform any functional limitations. Since Williamson, patentees must meet a heightened standard of review by sufficiently disclosing the functional basis for patents in the electrical or mechanical arts. Further, practitioners are wrestling with the challenges of claiming artificial intelligence (AI)-related inventions.

Patent owners and their counsel must account for the heightened standards when drafting applications. In the Federal Circuit decision in American Axle v. Neapco (2020), Judge Chen noted that the lesson to patent drafters should now be clear: while not all functional claiming is the same, simply reciting a functional result at the point of novelty poses serious risks under Section 101.

Listen as our authoritative panel of patent attorneys discusses how the courts have addressed these issues in recent decisions. The panel will examine functional claiming in the context of patents in the mechanical and electrical arts. The panel will explore the benefits and risks involved with using functional claims and offer best practices for leveraging Section 112(f) and functional claims to maximize patent protection.