AI and Written Description: When Does an AI Patent Claim Cross the Line?

Attorney: Sameer Gokhale
June 28, 2021

Following Ed Garlepp’s great discussion on AI disclosure issues[1][2], I want to describe a related problem with AI and issues arising under the written description requirement that I often bring up when presenting on this topic. I started raising this topic following an episode of HBO’s Silicon Valley.  One of the characters who lives in the incubator depicted in the show, Jian Yang, pitches an app to venture capitalists called “See Food” which is described as a “Shazam for food.” The user takes a picture of food, and then the app returns an identification of the food.    Eventually Jian Yang does come up with an app that can identify food. The problem: it can only identify “hot dog” and “not hot dog.”  When asked why he only created an app that only recognizes one type of food, Jian Yang explains that identifying more foods will require scraping significantly more images of food from the Internet to use as training data for a computational model.<... Read more

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

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

Disclosing AI Inventions - Part II: Describing and Enabling AI Inventions

Attorney: Edwin D. Garlepp
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

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

Invention and Conception: The AI Conundrum

Attorney: James R. Love
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

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 Patent Trends in the U.S. Patent Office: Is the U.S. Losing Its Lead?

Attorney: Michael R. Casey, Ph.D.
February 25, 2021

As noted in an earlier post on this blog (Using AI to Track AI Patents at the USPTO), the U.S. Patent and Trademark Office (USPTO) continues to see tremendous growth in the area of Artificial Intelligence (AI). While the USPTO’s  October, 2020 Report “Inventing AI: Tracing the diffusion of artificial intelligence with U.S. patents” utilizes a broader set of metrics to gauge the number of AI filings generally, a simplified claims-based metric shows that U.S. applicants appear to be losing ground as the dominant filers in this field to increasingly diverse global competition. <... 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

AI Initiatives at the EPO

Attorney: Robert Tarcu
January 29, 2021

Terminology such as Artificial Intelligence (AI) and Machine Learning (ML) have become commonplace – much like “text message,” “email,” and “smart device.” Turn on the news and you are very likely to hear such terms in various capacities.  Such new-found popularity is bound to cause industries to revamp their thinking; their organization; their goals.  It is also bound to instill unease in those concerned that the machines will take over.<... Read more