Subject Matter Eligibility

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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)

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

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

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 

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

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.Continue Reading Announcing IPO white paper on Best Practices for Protecting Inventions Relating to Artificial Intelligence

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)