October 7, 2021
by: Robert W. Downs, Ph.D.
My career includes work in research in artificial intelligence, patent examination at the U.S. Patent and Trademark Office, and patent application preparation and prosecution, all over a period of about 40 years. Over that period, I have completed three Masters Degree programs in computer-related fields. As a researcher, I have experienced the difficult challenge of not just writing computer programs in programming languages such as Fortran and Lisp, but getting the programs to work and actually produce desired results. As a patent examiner, I have experienced the difficult challenge of searching for prior art based on a high level description of an invention, as well as judging whether a computer-related invention is patentable under Section 101. As a patent agent, I have experienced a difficult challenge of preparing patent application for computer-related inventions, while keeping in mind a broad range of potential prior art and the high possibility of receiving a rejection under Section 101.<... Read more
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
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
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