PatentNext Takeaway: Can text generated by artificial intelligence (AI) (e.g., an “AI-generated text”) constitute “prior art” pursuant to U.S. patent law? The answer to that question will impact whether AI-generated text can be used to preclude human inventions from issuing as patents in the United States. Third-party entities currently publish AI-generated text for the express purpose of preventing patent inventions from issuing. But this seems to run afoul of U.S. law requiring human “conception,” not to mention the U.S. Constitution, which seeks “[t]o promote the Progress of Science and useful Arts ….” Accordingly, it is possible that Congress or the courts will look not only the to related statutory text, but also to existing court decisions to preclude AI-generated text from constituting “prior art.”Continue Reading Can Artificial Intelligence (AI) Generate Prior Art (e.g., a “Printed Publication”) pursuant to U.S. Patent Law?

I am excited to announce the publication of the Intellectual Property Owner (IPO)’s paper on Patent Marking regarding Software Medical Devices

The paper provides an in-depth analysis of patent marking laws as they apply to software and medical devices. It covers multiple jurisdictions, including the United States, the United Kingdom, France, and Germany. The paper addresses various types of medical devices and software platforms, such as external, implantable, cloud-based devices, and third-party devices. Continue Reading Patent Marking And Software Medical Devices (IPO Paper Announcement)

PatentNext Takeaway:  The U.S. Patent and Trademark Office (USPTO) recently issued examination guidance regarding patentability for artificial intelligence (AI)-assisted inventions. The guidance states that AI-assisted inventions are not “category unpatentable.” Instead, when a natural person provides a “significant contribution” to an invention, such an invention can be patentable even if an AI system contributed to the invention. While the guidance does not constitute law, it is grounded in law, i.e., the Federal Circuit’s so-called Pannu factors, which serve as a test for ensuring that a natural person contributed, at least in part, to the conception of the invention as required in the Federal Circuit’s Thaler decision on AI inventorship. The guidance also provides several useful guidelines and examples to help patent practitioners determine what constitutes a “significant contribution” for purposes of establishing natural person inventorship and, thus, patentability for AI-assisted inventions.  Continue Reading The U.S. Patent Office provides Inventorship Guidance for AI-Assisted Inventions

PatentNext Takeaway:  Demonstrating that a claimed invention provides an “improvement” to an underlying computing device is one of the best ways to achieve patent eligibility pursuant to Section 101 of U.S. Patent Law. However, the Federal Circuit has repeatedly held that an improvement to a “User Experience” (UX) alone is insufficient. The Federal Circuit recently issued yet another case, further cementing its position that improving a UX, without more, fails to demonstrate a technical improvement for satisfying Section 101 per the Alice two-part test.

****Continue Reading Improving a User Experience (UX) Alone Does Not Demonstrate a Technical Improvement for Demonstrating Patent Eligibility Satisfying Section 101

PatentNext Takeaway: The President’s recent Executive Order (EO) regarding artificial intelligence (AI) addresses, among other things, intellectual property (IP). The EO directs the U.S. Patent and Trademark Office (USPTO) and U.S. Copyright Office to provide guidance and recommendations on IP issues of patent inventorship, patent eligibility, and copyright authorship in view of Artificial Intelligence (AI). While the guidance and recommendations will not have the force of law, they are nonetheless expected to include data and insights from stakeholders that could form a basis for future legislation and/or provide persuasive information as AI-related cases find their way into U.S. courts.  Continue Reading Intellectual Property (IP) impacts from President Biden’s Executive Order on Artificial Intelligence (AI)

I am excited to announce the publication of the American Intellectual Property Law Association (AIPLA)’s article on “IP Aspects of Augmented Reality and Virtual Reality Technologies.” Continue Reading Announcing AIPLA article on Augmented Reality(AR) / Virtual Reality(VR): IP Aspects of Augmented Reality and Virtual Reality Technologies

In his petition for certiorari, Stephen Thaler had asked the U.S. Supreme Court to reverse the Federal Circuit decision in which the court ruled that artificial intelligence (AI) could not be listed as the sole inventor.  However, the Supreme Court has now denied Thaler’s petition, and it is now effectively up to Congress to act to promote any change on the issue.  As Thaler noted in his petition, this issue is unlikely to be appealed to the Supreme Court again.   Particularly, the Federal Circuit has already denied en banc rehearing; additionally, the Federal Circuit is the only court of appeals with jurisdiction over questions of patent law, so no circuit split will occur.  Indeed, as the law is essentially settled at this point, Applicants are unlikely to even file patent applications listing AI as the sole inventor, and thus the fact pattern is unlikely to repeat itself.Continue Reading The Future of AI Inventorship Following Denial of Stephen Thaler’s Petition

What is ChatGPT?

ChatGPT is an artificial intelligence (AI) model developed by OpenAI. In particular, ChatGPT is a type of “language” model designed to respond with a natural language reply when prompted with a text-based question. The “Chat” in ChatGPT refers to this question-and-answer design, where ChatGPT behaves like a ChatBot. Continue Reading ChatGPT and Intellectual Property (IP) related Topics

I am excited to announce the publication of the Intellectual Property Owner (IPO)’s white paper on “Software and Medical Device Guidance: A Global Perspective.”

The paper was authored by the IPO’s Software and Medical Device Subcommittee, which I had the honor and pleasure of leading in 2022. The Subcommittee reports to the IPO’s Software Committee. Continue Reading Announcing IPO white paper on a Global Perspective on Software and Medical Device Guidance