The Software IP Report
Strategies for Functional Patent Claims
By Charles Bieneman
Categories: 35 U.S.C. § 112, The Claims Interpreted Report, The Software IP Report
The Federal Circuit’s decision to weaken the presumption against interpreting patent claims under 35 U.S.C. § 112(f) (or 112, sixth paragraph), in Williamson v. Citrix Online, LLC, in 2015, highlighted the challenges that functional claiming has faced in recent years. At the AIPLA’s 2017 Annual meeting, I was part of a panel talking about these challenges. The basic takeaway? Functional claiming can be impossible to avoid, so embrace it. Here are links to my presentation on functional claiming strategies and the accompanying paper providing background into the law of Section 112(f), which provide more detail.