Federal Circuit Agrees with the USPTO: an AI System Cannot be an Inventor

Attorney: Kurt M. Berger, Ph.D.
August 16, 2022

The Federal Circuit recently affirmed a decision in the Eastern District of Virginia holding that the Patent Act unambiguously requires an inventor to be a natural person.<... Read more

The Ongoing Patent Dispute Over Innovative ML-Based Pattern Recognition

Attorney: Yuki Onoe
April 18, 2022

Support Vector Machine-Recursive Feature Elimination (SVM-RFE) is a technology which can be used to find relevant patterns in a large data set such as the data generated in the sequencing of genomes and produce smaller subsets. In Health Discovery Corp. v. Intel Corp.[1], the patent owner HDC, in its complaint for infringement, discussed the innovative aspects of the technology:<... Read more

AI as a Tool for the "PHOSITA"

Attorney: Sameer Gokhale
January 27, 2022

An ongoing discussion in the field of artificial intelligence (AI) and patent law relates to the implications of AI toward the standard for a person having ordinary skill in the art (“PHOSITA”). While the PHOSITA is a legal fiction, resolving the level of ordinary skill in the pertinent art is one of the Graham factors enunciated by the Supreme Court in the framework for determining obviousness under 35 U.S.C. §103.[1] <... Read more

Drafting AI Claims in a Way That Infringement is Detectable

Attorney: James R. Love
November 1, 2021

Drafting claims with infringement in mind has always been a challenge. For instance, claims should be drafted to ensure that they can be infringed by a single party in order to address divided infringement issues. Similarly, it may be useful to draft claims in a way that avoids requiring end-user infringement as end-users may not be the best target when considering litigation. In the same vein, it is important to draft claims in a way that infringement is detectable, as a patent owner must have facts that provide a plausible entitlement to relief. This means that the patent owner must have some basis to allege that the patent claims are being infringed. If the claims include features that are not readably detectable, the claims may, in effect, be useless when considering infringement. This is especially true in Artificial Intelligence where many features are difficult to easily detect without intimate knowledge of the AI system. In fact, AI systems are often considered black box systems in which the inner workings are not evident to the outside and sometimes not even to the operator of the AI system.<... Read more

Update on DABUS: Can an AI Machine be an Inventor?

Attorney: Kurt M. Berger, Ph.D.
October 18, 2021

As previously discussed in this blog (see Creation vs. Conception: Can an AI Machines be an Inventor?) some AI researchers believe that the output of certain sophisticated AI software can represent a new invention conceived of, not by the author, user, or trainer of the software, but by the software itself, and that the software or the “AI machine” should be listed as the inventor on a patent application for the new invention. This AI-machine-as-inventor proposition is currently being tested by Dr. Stephen Thaler via the filing of patent applications in over a dozen countries for inventions allegedly invented by a neural-network-based AI machine (“DABUS”), and the listing of the inventor as “DABUS” on the application (with Dr. Thaler listed as the applicant and assignee).  At the time of our previous posts last fall, the USPTO, the EPO, and the UKIPO each objected to listing DABUS as the inventor since DABUS is not a natural person.<... Read more