Artificial Intelligence

In an article published by Law360, Marshall Gerstein attorney Theresa Stadheim and Partner Ryan Phelan take a look at the U.S. Patent and Trademark Office’s evolving guidance on artificial intelligence-related inventions and how clarity through a detailed inventor interview can avoid significant challenges.

“The inventor interview is significant when drafting patent applications directed to AI or machine learning,” Theresa and Ryan write. “The abstract nature of AI innovations, often embodied in software, algorithms or machine learning models, rather than tangible physical components, can make it difficult for inventors to clearly articulate their invention's patentable aspects.”

Theresa and Ryan provide readers with suggested interview questions and strategic recommendations for having the inventor describe their process of inventorship.

Theresa and Ryan advise, “To forestall indefiniteness, abstract idea and enablement issues, patent practitioners should explain the technical aspects behind the most novel pieces of their inventions. Lack of sufficient detail can lead to both ineligibility under Section 101 and indefiniteness or lack of enablement under Section 112. While Sections 101 and 112 are legally distinct, the two issues are practically linked for AI inventions. Conducting your inventor interview to gather enough technical detail to satisfy the definiteness and enablement standards of Section 112 often requires the same level of technical specificity needed to overcome an abstract idea rejection under Section 101.

You can read their article in Law360 here.