PatentNext

PatentNext Summary: As a general rule, software-related patents should include an algorithm. An algorithm provides support for a software-related patent in a variety of ways, one of which is to provide support for a claim determined to be a “means-plus-function” (MPF) term pursuant to 35 U.S.C. § 112(f). Without such support, an MPF term can be held invalid.

The below article provides additional details. This article forms the first part of a multi-part series.

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Software inventions typically claim software-related elements such as computing instructions, module(s), package(s), component(s), or the like. These terms typically represent the source code or object code of the invention. However, when functional language follows these software-related terms, a risk arises where a court may construe such terms as means-plus-function (MPF) terms (even where the claim does not recite express “means for” or “step for”  language per 35 U.S.C. § 112(f)). 

Continue Reading Why including an “Algorithm” is Important for Software Patents (Part 1)

PatentNext

PatentNext Summary: Currently, patent laws require human inventors. For this reason, no country or legal jurisdiction presently allows an Artificial Intelligence (AI) to be an inventor. Such patent laws, however, are typically decades old and we can expect continued debate, and possible legislation, on the topic of whether an AI can be an inventor.

The below article provides additional details.

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Can Artificial Intelligence (AI) invent? No, according to various patent offices and patent laws around the world. Resistance to an AI as an inventor primarily stems from the fact that the written text of existing patent laws refers to human inventors, e.g., “individuals” or “persons,” which leaves little or no room for interpretation of a non-human AI as an inventor.

Continue Reading Can an Artificial Intelligence (AI) be an Inventor?

PatentNext

PatentNext Summary: AI-related inventions have experienced explosive growth. In view of this, the USPTO has provided guidance in the form of an example claim and an “informative” PTAB decision directed to AI-related claims that practitioners can use to aid in preparing robust patent claims on AI-related inventions.

The below article provides additional details.

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Artificial Intelligence (AI) has experienced explosive growth across various industries. From Apple’s Face ID (face recognition), Amazon’s Alexa (voice recognition), to GM Cruise (autonomous vehicles), AI continues to shape the modern world. See Artificial Intelligence.

Continue Reading How to Patent an Artificial Intelligence (AI) Invention: Guidance from the U.S. Patent Office (USPTO)

PatentNext

PatentNext Summary: Because AI is a relatively newer technology, court cases analyzing AI-related patents have been few in number. Given the increased numbers of AI patent filings, as recently reported by the USPTO, we can expect to see future court cases involving AI-related patents. We can also expect that courts will analyze these AI-related patents per the two-part Alice with the same scrutiny test as we have seen for more general software-related patent cases.

Introduction

In the last quarter of 2020, the United States Patent and Trademark Office (USPTO) reported that patent filings for Artificial Intelligence (AI) related inventions more than doubled from 2002 to 2018. See Office of the Chief Economist, Inventing AI: Tracking The Diffusion Of Artificial Intelligence With Patents, IP DATA HIGHLIGHTS No. 5 (Oct. 2020)

Continue Reading How the Courts treat Artificial Intelligence (AI) Patent Inventions: Through the Years since Alice

PatentNext

PatentNext Summary: When preparing a patent application for software or computer-implemented invention, a best practice includes describing, in the patent specification, how the software or computer-implemented invention improves an underlying computing device. Examples include describing how software or computer-implemented invention improves the speed or efficiency of the underlying computer device and/or reduces its processing needs or memory usage.  

The below article provides additional details.

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The Importance of Describing an “Improvement” for a Software or Computer-implemented Inventions

Typically, the United States Patent and Trademark Office (USPTO) scrutinizes software and computer-related inventions for “patent subject matter eligibility” under 35 U.S. Code § 101 (“Inventions patentable”). Basically, this means that the USPTO will consider whether a software-related invention directs to a patentable invention or to a mere “abstract idea” (which cannot be patented). See Alice Corp. v. CLS Bank International.    

Continue Reading How to Patent Software Inventions: Show an “Improvement”

PatentNext

PatentNext Summary: Software-related inventions are patentable. Considerations for patenting software-related inventions include: 

  1. Whether the patent claims fall into one of the four categories of “inventions patentable” (e.g., “a process”); and
  2. Whether the patent claims recite (or do not recite) a judicial exception (e.g., an “abstract idea”) as described by the U.S. Supreme Court in its often cited  “Alice” decision.

The below article provides additional details.

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Software increasingly empowers our everyday lives. From mobile apps implemented on phones and tablets, to “smart” thermostats that regulate household temperatures, to artificial intelligence (AI) based algorithms running on cloud computing platforms, new software-related inventions improve, automate, or change items that devices with which we interact.  

But are such software innovations patentable? Yes, software-related inventions are patentable, and this article explores issues to consider when preparing software-related patents.  Continue Reading Are Software Inventions Patentable?