PatentNext Summary: The Legal Board of Appeal (the “Board”) of the European Patent Office (EPO) recently suggested that the owner of an artificial intelligence (AI) machine could possibly be listed as an inventor of an AI-generated Invention. This suggestion arguably opens the door for companies or individuals, who own or use AI-generating machines, to designate themselves (instead of the AI machine) as the “inventor” on a patent application, even where the invention was wholly conceived by the AI machine itself.

Continue Reading European Patent Office (EPO) Suggests that the Owner of an Artificial Intelligence (AI) Machine Could be Listed as the Inventor of an AI-Generated Invention

PatentNext Takeaway: The concept of the “Metaverse,” while decades old, is just starting to gain traction today. Early efforts to establish the Metaverse came from the video game industry. That is, as video games have become more modern, they are increasingly designed to have interactive virtual worlds, which is a hallmark of the Metaverse. Because of this, we can expect the U.S. Patent and Trademark Office (USPTO) and courts to look to prior art and previous cases involving video game technology to decide Metaverse-related issues in the future. For the same reason, we can also use best practices for patenting software-related technologies (upon which video game technology relies) to prepare Metaverse-related patents.

Continue Reading Exploring the Metaverse and Patent-related topics

PatentNext Summary: Artificial Intelligence (AI) Patent Application filings continue their explosive growth trend at the U.S. Patent Office (USPTO). At the end of 2020, the USPTO published a report finding an exponential increase in the number of patent application filings from 2002 to 2018. This trend has continued. In addition, current data shows that AI-related application filings pertaining to graphics and imaging are taking the lead over AI modeling and simulation applications.
Continue Reading Artificial Intelligence (AI) Patent Filings Continue Explosive Growth Trend at the USPTO

I have been monitoring patent application filings around the world that list DABUS (the “Device for the Autonomous Bootingstraiming of Unified Sentience”) as the sole inventor. At issue is whether an Artificial Intelligence (AI) machine alone can be listed as an inventor on a patent application. A detailed chart, with country-by-country decisions, can be found here: Can an Artificial Intelligence (AI) be an Inventor? 

In today’s posting, I provide updates to this article. These come from the respective decisions of the patent offices, or related appellant courts, of New Zealand, EPO, and the UK.

Continue Reading Updates on AI Inventorship: New Zealand, the EPO, and the UK allow an Artificial Intelligence (AI) machine to be listed as a Joint Inventor along with at least one Human Inventor

On January 6, 2022 the U.S. Patent Office (USPTO) announced a new pilot program that will allow patent applicants to delay responding to Office Actions that include issues of subject matter eligibility (SME) under 35 USC § 101/Alice. The pilot program is named the “Deferred Subject Matter Eligibility Response Pilot Program.”

Continue Reading USPTO’s Pilot Program for Deferring Subject Matter Eligibility (SME) Responses

PatentNext Summary: Software-based medical devices that focus on “data processing” can be patented. However, a patent practitioner should exercise care when drafting such claims. Otherwise, patent eligibility issues can arise. This article demonstrates countervailing Federal Circuit decisions that reached opposite patent eligibility conclusions for a pair of “data processing” medical device patents asserted by Cardionet, LLC against Infobionic, Inc.

The below article provides additional details. This article forms the second part of a multi-part series. The first part, focusing on patent-eligible software-based medical devices (i.e., “particular machines” and those having “underlying improvements”), may be found here: Patenting Software-based Medical Devices (Part 1).

Continue Reading Patenting Software-based Medical Devices (Part 2)

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.

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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).

Continue Reading Why including an “Algorithm” is Important for Software Patents (Part 2)

PatentNext Summary: The development of modern medical devices increasingly includes the use of software for performing sophisticated diagnostic or treatment-related functions. In fact, the U.S. Food and Drug Administration (FDA) now defines specific categories of software-based medical devices that include “Software as a Medical Device (SaMD)” and “Software in a Medical Device (SiMD).” In a similar way, courts review patents directed to software-based medical devices across several categories, which include inventions having “particular machines” (e.g., SiMD) and inventions purely involving software only (e.g., SaMD).

Continue Reading Patenting Software-based Medical Devices (Part 1)