Attorney:
Sameer Gokhale
July 22, 2024
The U.S. Patent and Trademark Office (USPTO) has issued an update to the guidance on patent subject matter eligibility to address artificial intelligence (AI). This update provides further clarity and consistency on how the USPTO and applicants should evaluate subject matter eligibility of claims in patent applications and patents involving inventions related to AI technology. The guidance update also announces three new examples of how to apply this guidance through a few key technologies. <... Read more
Attorney:
Nicholas Rosa, Ph.D.
May 22, 2024
On April 30, 2024, the USPTO published a Request for Comments on the future impact of publications by generative AI on the issue of prior art. Previously, the USPTO has consistently come down against generative AI as an inventor, saying that “under current law, only natural persons may be named as an inventor in a patent application.” See Inventorship Guidance for AI-Assisted Inventions, 89 FR 10043, Docket No. PTO-P-2023-0043. Based on this stance, however, it is unclear if a publication by a generative AI could be prior art to a patent application. Toward providing an answer to that question, the USPTO is seeking public comments on “what qualifies as prior art, the assessment of the level of skill of a [person having ordinary skill in the art (PHOSITA)], and determinations of patentability made in view of these evaluations.”<... Read more
Attorney:
Evan Smith, Law Clerk
March 27, 2023
The U.S. Copyright Office has clarified its examination and registration practices for works that were produced with the assistance of artificial intelligence (“AI”), in a policy statement titled “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence.” This statement addresses the registration eligibility and application requirements for creative works that were generated by humans working in concert with AI.<... Read more
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
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