April 30, 2021
In Part I of this series on Disclosing AI Inventions, we discussed the basics of machine learning and the unique disclosure challenges presented by the “black box” nature of trained machine learning models. Nevertheless, current U.S. patent laws are generally viewed as sufficient to ensure adequate disclosure of machine learning inventions to the public, and it will be left to the courts to shape the details of disclosure requirements through interpretation of existing patent laws. In this Part II, we discuss techniques for disclosing machine learning inventions in compliance with the written description and enablement requirements of 35 U.S.C. 112(a).<... Read more
April 16, 2021
Supervised machine-learning models are at the heart of some of the biggest advances in artificial intelligence (AI) that have emerged in the past decade. This post revisits the nuts and bolts of drafting claims in this area, and includes two different industry examples of implementing supervised machine learning: medical imaging and speech detection.<... Read more
April 9, 2021
Our recent post “Tracking AI Prosecution Trends at the U.S. Patent Office” presented USPTO data which suggests that future prosecution of AI inventions may be less focused on patent eligibility under 35 U.S.C. §101 and more focused on the traditional requirements of §§ 102, 103 and 112. This post is the first of a two part series looking into the challenges that AI inventions present to one of these traditional requirements: patent disclosure under 35 U.S.C. §112(a). In this Part I, we identify the unique disclosure issues with AI inventions. In Part II, we provide practice tips for describing and enabling AI inventions.<... Read more
March 17, 2021
As has been discussed here previously,[1] the current position of the USPTO is that Artificial Intelligence (AI) cannot be an inventor.[2] The USPTO’s position on the matter has been challenged in district court in Thaler v. Iancu, et al, 1:20-cv-00903.[3] Although the case is not yet complete, it is likely that the court will side with the USPTO and hold that AI cannot be considered to be an inventor of a US patent application based on 35 U.S.C. § 100(f), which clearly states that “the term ‘inventor’ means the individual, or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” Although Thaler, the Plaintiff in the case, has made a number of policy arguments for inclusion of AI inventorship, a ruling in his favor would be a surprise.<... Read more
March 5, 2021
written by Alec Royka
Following last week’s post on this blog (AI Patent Trends in the U.S. Patent Office: Is the U.S. Losing Its Lead?), we look deeper into the filing data of AI applications to better understand how the USPTO’s treatment of inventions in this field have evolved over time. AI applications are increasing rapidly, but what happens when these applications get into substantive prosecution? Patent practitioners who understand this information can better help their clients avoid some of the pitfalls present, potentially resulting in higher allowance rates and less office actions to disposition. The data presented throughout this post was compiled using Juristat and focuses on the USPTO’s Art Units which handle the greatest number of AI filings (2122, 2129, 2121, 2124, 2123, 2128, 2127), further filtered by USPC 706, which relates to “Data Processing – Artificial Intelligence.”<... Read more