Application of AI in Legal Services

June 11, 2021

written by: Kasumi Kanetaka

A question that is often asked is why there are so many lawyers? The question is often paired with questions about why lawyers spend so much time on seemingly insignificant tasks and why they are always busy and have a poor work-life balance.<... Read more

Disclosing AI Inventions - Part I: Identifying the Unique Disclosure Issues

Attorney: Edwin D. Garlepp
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

Tracking AI Prosecution Trends at the U.S. Patent Office

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

AI Initiatives at the JPO

Attorney: Yuki Onoe
February 10, 2021

As a follow-up to the previous post on AI Initiatives at the EPO, we provide an update on the activities by the JPO – 1) creation of a new Team for Supporting AI Examinations in January 2021, and 2) a recent publication of a PCT application, titled Management System And Management Method, filed by JAPAN AS REPRESENTED BY COMMISSIONER OF THE JAPAN PATENT OFFICE.<... Read more

Patent Issues for Factory Automation Inventions in AI

Attorney: Sameer Gokhale
January 15, 2021

Some of the most impressive AI breakthroughs are the result of separate contributions and heavy investments made by both large and small players in the tech-world. While many inventions in AI will be directed to cutting edge products, such as the in-home virtual assistant or the self-driving car, a lot of patentable innovations are directed to products which the public will never see or use, such as innovations in Factory Automation (FA).<... Read more

Creation vs. Conception: Can an AI Machine be an Inventor?

Attorney: Kurt M. Berger, Ph.D.
October 28, 2020

Computational Creativity, a new subfield of Artificial Intelligence (AI), is the study of software that mimics human creativity. AI researchers in this field are designing software to paint pictures, write poems, and compose music. In science and engineering, some 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.... Read more