Morgan Connell’s Post

On July 17, the U.S. Patent and Trademark Office (USPTO) issued a 2024 Guidance Update on patent subject matter eligibility (SME), including on artificial intelligence (AI). This update complements the guidance that the USPTO issued in February 2024 regarding patent inventorship and AI-assisted inventions. Both documents were created at the direction of Executive Order 14110 on the “Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” (October 30, 2023). The order directs the USPTO to “promote innovation and clarify issues” related to AI and intellectual property.

Today on IPWatchdog, Ahsan Shaikh wrote: "On July 17, the U.S. Patent and Trademark Office (USPTO) issued a 2024 Guidance Update on patent subject matter eligibility (SME), including on artificial intelligence (AI). This update complements the guidance that the USPTO issued in February 2024 regarding patent inventorship and AI-assisted inventions. Both documents were created at the direction of Executive Order 14110 on the “Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” (October 30, 2023). The order directs the USPTO to “promote innovation and clarify issues” related to AI and intellectual property."

USPTO has issued a guidance update on patent subject matter eligibility to address innovation in critical and emerging technologies, including in artificial intelligence (AI). This guidance update, which goes into effect on July 17, 2024, will assist USPTO personnel and stakeholders in determining subject matter eligibility under patent law (35 § U.S.C. 101) of AI inventions. This latest update builds on previous guidance by providing further clarity and consistency to how the USPTO and applicants should evaluate subject matter eligibility of claims in patent applications and patents involving inventions related to AI technology. The guidance update also announces three new examples of how to apply this guidance throughout a wide range of technologies. #AI #ArtificialIntelligence #SubjectMatterEligibility #IntellectualProperty #Patnet #USPTO #Innovation

From Mintz: The USPTO update, effective July 17, 2024 and prompted by Executive Order 14110 on the “Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence,” aims to refine and clarify the process for determining the patent eligibility of AI-related inventions. Notably, it provides several examples of patent eligible and ineligible claims directed to AI technology paired with detailed eligibility analysis for each. Thus, the guidance provides practitioners with more tools to evaluate patentability of an invention and to draft claims that are more likely to avoid section 101 rejections common in software-related patent applications. #artificialintelligence #ai #patents #intellectualproperty #uspto

The US Patent Office, citing President Biden’s EO that emphasizes promoting AI innovation, has issued new guidance and examples for AI-related patent claims, which the Office treats as mental processes using generic computers. While the new examples seem unlikely to incentivize public disclosure of innovations involving applied AI, they fortunately do not address, and therefore do not rule out, some key areas of AI innovation that may be patentable.

The Center for Strategic and International Studies has recently critiqued the February 2024 USPTO guidelines regarding AI in the invention process. Particularly intriguing is the debate on whether AI should be considered a contributor or merely a tool in human-led inventions. This discussion is key for advancing clarity in IP rights and fostering innovation. Highly recommended read for professionals in the field. #IntellectualProperty #AI #Innovation #USPTO

In our latest article, "Dissecting the USPTO’s Update to Eligibility Guidance for AI Inventions", Author Ahsan Shaikh writes: On July 17, the U.S. Patent and Trademark Office (USPTO) issued a 2024 Guidance Update on patent subject matter eligibility (SME), including on artificial intelligence (AI). This update complements the guidance that the USPTO issued in February 2024 regarding patent inventorship and AI-assisted inventions. Both documents were created at the direction of Executive Order 14110 on the “Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” (October 30, 2023). The order directs the USPTO to “promote innovation and clarify issues” related to AI and intellectual property.

Patents Are Not What They Used to Be! ‘90% of patents are not worth the money spent on them’ This is a worrying and shocking statement and not entirely true. It might be true at any point in time when you are seeking to sell some patents but patents provide much more than their immediate spot value in the ’market’. AI is a game changer. See the recent FT article where it is explained that there are risks of inadvertent disclosure by using open AI tools to research and help draft the patent. We have also known for a long while that 81% of patents are damaged or destroyed when they are challenged in US courts at something called the PTAB (Patent and Trademarks Appeal Board). This is in part due to vagaries and weaknesses of the language used to claim what the invention delivers but mainly due to previously unknown prior art demonstrating that the invention was not so novel after all and someone had been there before. AI rocks prior art being able to discover what was difficult for a human to unearth previously. So strategies for protecting inventions have been changing for a while and those changes are accelerating again. At Exalt IP we have been preparing strategies to defend innovation in this modern era for the last 10 years. So how do you protect innovation in the age of AI?

In our latest article, "Changes to AI Patent Practice in View of the USPTO’s Recent Actions", Author Wen Xie writes: The United States Patent and Trademark Office (USPTO, the Office or the Agency) has recently issued multiple guidance and proposed rules that potentially change the landscape of patent practice. On top of that, the USPTO has also proposed substantial terminal disclaimer fee increases that can induce early filing of terminal disclaimers. The Agency’s actions will significantly impact patenting artificial intelligence and it is important to understand the USPTO’s position from a holistic perspective with respect to this critical emerging technology.

John Pryor - thanks for sharing this article. “90% of patents are not worth the paper they are written on” “81% of claims are overturned by the PTAB” Yet companies seem to focus on patents almost exclusively as do universities. Will these statistics drive companies to rethink and transform their intellectual asset programs? Is this the business case for change? Timely topic given the rise in #tradesecrets as an asset class in need of protection. #tradesecrets