PatentNext Takeaway: To date, the Federal Circuit has not reviewed many cases involving artificial intelligence (AI). However, in a recent case, the Federal Circuit found that a “machine learning” claim element lacked sufficient enablement because both the claim itself and the written description of the patent to which it belonged failed to describe “how” the claimed invention implemented this element. In view of this ruling, patent practitioners should endeavor to explain sufficiently in the written description the specific aspects of how machine learning features (and other computer-implemented invention features) operate in order to demonstrate sufficient enablement.Continue Reading The Federal Circuit hints at Enablement requirements for Artificial Intelligence (AI) Inventions
PatentNext Summary: Sufficiency of disclosure for Artificial Intelligence (AI) inventions in the U.S. can be supported by expert testimony opining on the knowledge that one of ordinary skill in the art would have held based on the disclosure for the patent specification.
In an earlier article, we compared the sufficiency of disclosure for Artificial Intelligence (AI) patents in the U.S. and the European Patent Office (EPO). See A Tale of Two Jurisdictions: Sufficiency of Disclosure for Artificial Intelligence (AI) Patents in the U.S. and the EPO.Continue Reading Sufficiency of Disclosure for Artificial Intelligence Patents – U.S. Case Example
PatentNext Summary: In order to prepare patent applications for filing in multiple jurisdictions, practitioners should be cognizant of claiming styles of the various jurisdictions that they expect to file AI-related patent applications in, and draft claims accordingly. For example, different jurisdictions, such as the U.S. and EPO, have different legal tests that can result in different styles for claiming artificial intelligence(AI)-related inventions.
In this article, we will compare two applications, one in the U.S. and the other in the EPO, that have the same or similar claims. Both applications claim priority to the same PCT Application (PCT/AT2006/000457) (the “’427 PCT Application”), which is published as PCT Pub. No. WO/2007/053868. Continue Reading A Tale of Two Jurisdictions: Sufficiency of Disclosure for Artificial Intelligence (AI) Patents in the U.S. and the EPO
PatentNext Summary: In some instances, software-based patent applications can fail to include a sufficient algorithm describing “how” the software interacts with the underlying hardware of the invention. This can lead to issues in both prosecution and litigation, creating unnecessary expense and/or hardship. Therefore, as a general rule, software-related patents should include an algorithm. An algorithm provides support for a software-related patent pursuant to 35 U.S.C. § 112(a), including (1) by providing sufficiency of disclosure for the patent’s “written description” and (2) by “enabling” one of ordinary skill in the art (e.g., a computer engineer or computer programmer) to make or use the related software-related invention without undue experimentation. Without such support, a patent claim can be held invalid.
The below article provides additional details. This article forms the second part of a multi-part series. The first part, focusing on indefiniteness pursuant to 35 U.S.C. §§ 112(b) and (f), may be found here: Why including an “Algorithm” is Important for Software Patents (Part 1).
PatentNext Summary: Computer and software-implemented inventions, especially in the field of Artificial Intelligence (AI), have experienced explosive growth in both Korea and the U.S. This article compares the similarities and differences between the patent laws of the two countries and identifies considerations when drafting a software-related patent application, with a focus on AI as an example technology.
This article is co-authored by Seong Tahk AHN and Ryan N. Phelan.