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.
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)
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.
Continue Reading Patenting Software Inventions in Korea and the U.S.
PatentNext Summary: As a general rule, software-related patents should include an algorithm. An algorithm provides support for a software-related patent in a variety of ways, one of which is to provide support for a claim determined to be a “means-plus-function” (MPF) term pursuant to 35 U.S.C. § 112(f). Without such support, an MPF term can be held invalid pursuant to 35 U.S.C. § 112(b).
Continue Reading Why including an “Algorithm” is Important for Software Patents (Part 1)
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PatentNext Summary: Currently, patent laws require human inventors. For this reason, no country or legal jurisdiction presently allows an Artificial Intelligence (AI) to be an inventor. Such patent laws, however, are typically decades old and we can expect continued debate, and possible legislation, on the topic of whether an AI can be an inventor.
SUMMARY UPDATE (08/9/21): Since the initial post, South Africa has issued the world’s first patent that listed an AI inventor. Also, since the initial post, an Australian judge has become the first jurist to rule that AI systems can be recognized as an inventor on patent applications.
The below article provides additional details.
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Can Artificial Intelligence (AI) invent? No, according to various patent offices and patent laws around the world. Resistance to an AI as an inventor primarily stems from the fact that the written text of existing patent laws refers to human inventors, e.g., “individuals” or “persons,” which leaves little or no room for interpretation of a non-human AI as an inventor.
Continue Reading Can an Artificial Intelligence (AI) be an Inventor?
PatentNext Summary: AI-related inventions have experienced explosive growth. In view of this, the USPTO has provided guidance in the form of an example claim and an “informative” PTAB decision directed to AI-related claims that practitioners can use to aid in preparing robust patent claims on AI-related inventions.
The below article provides additional details.
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Artificial Intelligence (AI) has experienced explosive growth across various industries. From Apple’s Face ID (face recognition), Amazon’s Alexa (voice recognition), to GM Cruise (autonomous vehicles), AI continues to shape the modern world. See Artificial Intelligence.