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Strategies for Obtaining Patents on AI Inventions in the U.S. and Europe

Artificial intelligence (“AI”) has exploded in the last decade. Adopted in many business sectors, AI is rapidly becoming an integral part of society. Thus, obtaining patent protection for AI technology is more important now than ever before.

35 U.S.C. §101 of the Patent Act identifies the statutory classes of patent-eligible subject matter as follows:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Despite the broad scope of these statutory classes, courts have created exceptions, holding that laws of nature, natural phenomena, and abstract ideas, such as mental processes, are not eligible for patenting. At a high level, much of AI attempts to mimic human mental processes. Thus, at face value, U.S. law may seem to preclude AI from patent eligibility; however, this hurdle may be overcome at the U.S. Patent and Trademark Office with proper patent strategy.

First, U.S. patent applications should include a detailed description of the technical substance underlying the AI technology. Simply relying on black box description of “artificial intelligence” or “machine learning” will likely not be sufficient. Patent applications should avoid personification of “modules” or “processors” with description that merely states that they “learn” or “think” without providing any specific details about how the “learning” occurs. They should include detailed step-by-step algorithms and concrete examples of how the AI/machine learning can be applied. Claims should recite the AI technology without over-generalization, making it difficult for patent examiners (or judges) to dismiss them as too abstract (e.g., as a “mathematical concept,” a “method of organizing human activity,” or a “mental process”). If specific features (such as training or regression features) are important aspects of the AI invention, the patent should describe and claim those features.

Much of the above advice for U.S. patent applications also applies in Europe. The most significant overlap between the U.S. and Europe is the technical problem/solution approach to patent drafting. Thus, laying out the technical problems in the specification coupled with the specific, technical solutions—and claiming those solutions—remains a viable approach in both the U.S. and Europe. Describing improvements to how a computer performs machine learning or executes AI (e.g., by running faster, using less memory, etc.) helps in both jurisdictions. Reciting specific use cases may be particularly helpful in Europe with no apparent downside in the U.S. For example, reciting AI example applications in digital audio, image or video enhancement or analysis will typically help applicants in both jurisdictions.

Subject matter eligibility in the U.S. and Europe will continue to be threshold hurdle for AI patent applicants; but by applying the above-described strategies and remaining abreast of new legal developments, innovators may ultimately gain the protection they seek.

About the Authors

Maria Anderson – Partner, Knobbe Martens. Ms. Anderson joined the firm as a partner in the Seattle office in January 2008. Ms. Anderson has extensive experience in comprehensive, strategic client counseling in all aspects of intellectual property. She has been very active in the prosecution of patent applications in the computer science and e-commerce fields since 1993.

Kimberly A. Kennedy – Associate, Knobbe Martens. Kim Kennedy is an associate in the firm’s Orange County office. During law school, Kim was a member of the Intellectual Property Law Association and the Journal of Law and Technology. She received her Bachelor’s Degree in Chemistry, specializing in Chemical Biology, from UC Berkeley.

Alexander J. Martinez – Associate, Knobbe Martens. Alex Martinez counsels clients regarding patent and intellectual property matters. Alex has prepared and prosecuted patent applications in a variety of technology areas. In particular, he has specialized in the computer/software, data processing, and network monitoring and security systems areas. His practice also includes prosecuting design patents. For example, he advises his clients in the intricacies of prosecuting designs directed towards computer icons, graphical user interfaces, and graphical animations. He also analyzes open source licenses for software clients.

 

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