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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.

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 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

The USPTO has released a crucial update on #patent #subjectmattereligibility, focusing on artificial intelligence (#AI) inventions. This guidance, effective July 17, 2024, aims to provide clarity and consistency in evaluating AI-related patent applications under 35 U.S.C. § 101. Key takeaways for in-house patent counsel: 1. Enhanced Clarity: The guidance offers additional insights on applying subject matter eligibility criteria to AI inventions, building on previous guidelines. 2. New Examples: Three new examples demonstrate the application of the guidance across various technologies, helping practitioners navigate complex AI patent scenarios. 3. Federal Circuit Alignment: The update incorporates discussions of relevant Federal Circuit decisions on subject matter eligibility. 4. Public Feedback Opportunity: The USPTO is accepting comments on the guidance and examples until September 16, 2024. 5. Broader AI Initiative: This update is part of a larger USPTO effort addressing AI's impact on intellectual property, including recent inventorship guidance for AI-assisted inventions. For in-house counsel, this guidance presents an opportunity to refine AI patent strategies, potentially increasing the likelihood of securing protection for AI innovations. It's crucial to review the full guidance and examples available on the USPTO's AI-related resources webpage. #PatentLaw #ArtificialIntelligence #IPStrategy Thoughts on how this might impact your AI patent portfolio? Let's discuss in the comments! Citations: [1] https://lnkd.in/eUbkGXvG

IPWatchdog 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."

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.

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.

🚀 **New USPTO Guidance on AI Patents: A Timely Update** 🚀 The USPTO has issued updated guidance on subject matter eligibility, specifically addressing AI-related inventions. This update, effective July 17, 2024, is particularly timely given that approximately **20% of recent patent applications are AI-related**. ### Key Highlights from the New Guidance: 1. **Enhanced Clarity for AI Innovations**:   - The guidance aims to provide more clarity and consistency in evaluating the subject matter eligibility of AI-related inventions under 35 U.S.C. § 101.   - This update builds on previous guidance by offering detailed examples to help USPTO personnel and applicants understand how to apply eligibility criteria to AI claims. 2. **New Examples**:   - Three new examples illustrate the application of the eligibility analysis to AI claims:    - Use of an artificial neural network to detect anomalies.    - AI-based methods for analyzing and separating speech signals.    - An AI model designed to personalize medical treatment based on individual patient characteristics. 3. **Balancing Innovation and Patentability**:   - The USPTO emphasizes fostering innovation while preventing the monopolization of broad concepts that could hinder further advancements.   - The guidance clarifies that AI tools themselves cannot be inventors; only inventions with significant human contribution are patentable. ### Why This Matters: - **For Innovators**: This guidance provides much-needed clarity, helping innovators navigate the complexities of patenting AI technologies. - **For Patent Practitioners**: It underscores the importance of strategic patent drafting and prosecution to ensure compliance with updated eligibility criteria. - **For the AI Community**: It reflects the USPTO's commitment to supporting AI innovation while ensuring a balanced and fair patent system. ### Looking Forward: The USPTO is open to public feedback on this new guidance until September 16, 2024. This is a great opportunity for stakeholders to share their insights and help shape the future of AI patenting. For more details, you can read the full guidance updates here: (https://lnkd.in/e-nwgSqY) and explore the exampleshere: (https://lnkd.in/ekXJUyu4). #AI #Patents #Innovation #IntellectualProperty #TechLaw

The recent examination guidance from the USPTO regarding patentability for AI-assisted inventions clarifies that a natural person can use an AI tool to create a patented invention so long as that natural person provided a "significant contribution" in view of the Federal Circuit's Pannu factors. This guidance, while not law, offers crucial insights and examples to navigate inventorship and patentability in the emerging area of AI innovation. Read the latest PatentNext.com blog post by partner Ryan Phelan here: https://bit.ly/4cfFkNJ #USPTO #PatentLaw #AIInnovation

The USPTO has released new guidance on patent eligibility for AI inventions, effective July 17, 2024. The guidance has three new examples showing how the Office expects examiners to draw the line. Guidance is open for public comment for 60 days. AI inventions are eligible, including the use of AI. As you might guess, the easiest pathway is to provide a technical solution to a technical problem. This new document is the guidebook for examiners and so is an important read for anyone working in AI patents. https://lnkd.in/gHCkwfRz