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

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

My Reflections on Examining and Prosecuting Patents in AI for the Last 40 Years

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

Protecting the Data that Fuels AI

Attorney: Sameer Gokhale
May 28, 2021

Recently, I had the privilege of participating in a couple of virtual conferences as a panelist on issues related to artificial intelligence (AI) and intellectual property (IP). Normally when I participate as a speaker at a conference I speak on many of the issues you may have read in our previous blog posts. I tend to focus heavily on patent prosecution issues in obtaining an AI patent, whether in the U.S. or around the globe. However, these two recent panels had a particular focus on how to protect data as an asset. While the issue of protecting data (or information in general) has long been a grey area issue in the realm of IP, this issue has risen to the forefront due to AI and the rise of “Big Data.” <... 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