I am excited to announce the publication of the Intellectual Property Owner (IPO)’s white paper on “Protecting Inventions Relating to Artificial Intelligence: Best Practices.”
The paper was authored by the IPO’s Software Related Inventions Committee and the Artificial Intelligence (AI) & Other Emerging Technologies Committee, of which I am a member.
I had the honor of co-authoring this paper with my fellow IPO committee colleagues Frank Chau, Sumon Dasgupta, John Kind, Alex Bridge, Thomas Burton, Michael Carey, Christina Huang, Dave Kincaid, Jennifer Lacroix, Giordana Mahn, and John Pienkos.
The paper may be found here and covers various best practices for protecting Artificial Intelligence (AI) inventions. These include:
- How to get the most out of a disclosure interview with AI inventors. For example, how to work with inventors to prepare a strong AI patent that will hold up during prosecution at the Patent Office and in the courts.
- Ethical issues to consider when preparing AI invention disclosures. For example, how AI models can be improperly trained with bias, and how to remove bias by taking into consideration data used for training AI models (“garbage in, garbage out”).
- International Considerations. Including AI considerations from the European Patent Office (EPO), Korea, Japan, China.
- Inventorship Issues. Whether an AI can be an “inventor” as defined by various patent laws.
- Prosecution of AI inventions. How to prepare AI patents with strategies to predict and overcome possible rejections under 35 U.S.C. §101 and §112.
- Drafting AI Claims that are detectible and related Trade Secret issues. How to draft AI patent claims that can be detected for patent infringement purposes, or whether to keep AI-related information a trade secret instead.
- Enforcement of AI-related inventions. How U.S. courts have treated AI-related inventions through the years since the Supreme Court’s landmark decision regarding patent subject matter eligibility in Alice Corp. v. CLS Bank International (“Alice”).
I am further honored that some information incorporated in the IPO white paper came directly from PatentNext articles, including the following:
- How to Patent an Artificial Intelligence (AI) Invention: Guidance from the U.S. Patent Office (USPTO)
- Can an Artificial Intelligence (AI) be an Inventor?
- How the Courts treat Artificial Intelligence (AI) Patent Inventions: Through the Years since Alice
- Patenting Software Inventions in Korea and the U.S.
I look forward to working on this year’s upcoming paper to advance these topics further.
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