Rooting out vague patents is a priority for the courts, the USPTO, even the White House. This webinar looked at patent prosecution practice since last year’s en banc Federal Circuit decision in Williamson v. Citrix, which has led to more patent claims invoking § 112(f) of the patent law. Before Williamson, the Federal Circuit had concluded that if the patent does not include the word “means,” there is a strong presumption that the requirements of Section 112(f) do not apply. Overturning this legal standard, the full court said in Williamson that the historical use of this “strong” presumption “resulted in a proliferation of functional claiming” free of the strictures set forth in the statute. Dave Easwaran was an invited speaker on a webinar discussing this shift in the law.
A USPTO official opened the webinar by outlining the criteria the USPTO uses to decide whether a claim invokes Section 112(f) and what structural disclosure is enough to support such a claim. Dave and the other speakers then addressed the pros and cons of having a claim invoke Section 112(f) considering recent tighter application of Sections 112(b) and Section 101, the latest on best practices for prosecuting patents, and the question of whether patents being approved by the USPTO would pass muster in litigation.
September 28, 2016