Artificial Intelligence

PatentNext Blog

PatentNext is a weblog (“Blog”) about Patent and Intellectual Property (IP) law focusing on Next-generation and New Age technologies.

Recent Blog Posts

• Generative Artificial Intelligence (AI) Patent Application Filings See Early Growth Trend at the USPTO PatentNext Summary: Generative Artificial Intelligence (GenAI) patent application filings continue to rise at the U.S. Patent and Trademark Office (USPTO), with a significant concentration in Tech Center 2100, which focuses on computer architecture and software, particularly AI and simulation technologies. GenAI inventions commonly face Section 103 (obviousness) and Section 101 (subject matter eligibility) rejections, with the latter being a frequent challenge for computer-related inventions. Despite this, Tech Center 2100 boasts a relatively high allowance rate of 79%, while other centers,... More
• AI-based Inventions: Patenting vs. Trade Secret Considerations PatentNext Takeaway: When deciding whether to patent AI-based inventions or maintain them as trade secrets, key considerations include the extent of public disclosure and the detectability of the AI model. Deploying an AI model in consumer-facing devices or making its output public often supports patenting to secure exclusivity. On the other hand, low detectability and sensitive training data, such as personal or medical information, may favor trade secret protection. Balancing these factors alongside the need for sufficient disclosure to meet... More
• Drafting Software-based Patent Claims to Avoid Costly Divided Infringement Issues This article is co-authored by Phelan Simpkins, counsel for State Farm who oversees emerging technology licenses, among other key areas for the company. Phelan is speaking in his individual capacity. The views expressed herein do not necessarily reflect the view and position of State Farm. PatentNext Takeaway: This post discusses the issues of divided infringement in U.S. patent law, specifically focusing on software-based patent claims. Divided infringement occurs when multiple parties collectively perform all the steps of a patent claim, but... More
• AI-based Medical Devices and the FDA’s Predetermined Change Control Plans (PCCPs) PatentNext Takeaway: This post highlights the FDA’s increasing regulatory efforts for artificial intelligence (AI) and machine learning (ML)-enabled medical devices (MLMDs), with a focus on managing device AI/ML updates through Predetermined Change Control Plans (PCCPs). The FDA emphasizes five guiding principles for PCCPs to ensure safety, risk management, and transparency for MLMDs throughout their lifecycle. The post also notes a significant rise in AI-based medical device FDA submissions and related patent filings, particularly since 2016, indicating growing interest in this... More
• WIPO Issues a Patent Landscape Report on Generative Artificial Intelligence (GenAI) PatentNext Takeaway:  WIPO published a Patent Landscape Report on GenAI.  The Patent Landscape Report discusses trends in GenAI, including trends in: GenAI scientific publications, GenAI patents, GenAI models, types of data used in GenAI, and GenAI application areas. **** GenAI Scientific Publications and Patent Families There has been a sharp increase in the number of patent families over the past 10 years.  Specifically, GenAI has grown from 733 in 2014 to more than 14,000 in 2023.   This rise of GenAI has been mainly... More
• The USPTO Issues Guidance on Patenting Artificial Intelligence (AI)-related Inventions per 35 U.S.C. § 101 (Subject Matter Eligibility) PatentNext Takeaway: The USPTO announced its 2024 Guidance Update on Patent Subject Matter Eligibility, particularly focusing on Artificial Intelligence (AI). Effective July 17, 2024, this guidance aims to address examination procedures for U.S. patent applications under 35 U.S.C. § 101, following President Biden’s executive order on the safe development and use of AI. The 2024 AI Guidance is designed to help USPTO personnel apply existing subject matter eligibility rules to AI-related inventions during patent examination, appeal, and post-grant proceedings. It... More
• Can Artificial Intelligence (AI) Generate Prior Art (e.g., a “Printed Publication”) pursuant to U.S. Patent Law? PatentNext Takeaway: Can text generated by artificial intelligence (AI) (e.g., an “AI-generated text”) constitute “prior art” pursuant to U.S. patent law? The answer to that question will impact whether AI-generated text can be used to preclude human inventions from issuing as patents in the United States. Third-party entities currently publish AI-generated text for the express purpose of preventing patent inventions from issuing. But this seems to run afoul of U.S. law requiring human “conception,” not to mention the U.S. Constitution,... More
• Patent Marking And Software Medical Devices (IPO Paper Announcement) I am excited to announce the publication of the Intellectual Property Owner (IPO)’s paper on Patent Marking regarding Software Medical Devices.  The paper provides an in-depth analysis of patent marking laws as they apply to software and medical devices. It covers multiple jurisdictions, including the United States, the United Kingdom, France, and Germany. The paper addresses various types of medical devices and software platforms, such as external, implantable, cloud-based devices, and third-party devices.  I contributed as an author and also in my... More
• Artificial Intelligence (AI) Patenting Handbook: Version 2.0 I am excited to announce the publication of the Intellectual Property Owner (IPO)’s Artificial Intelligence (AI) Patenting Handbook (the “AI Patenting Handbook”). This is a second, updated version of the AI patenting handbook.  I had the honor of participating as an author along with fellow IPO committee members of the Software Related Inventions Committee and the Artificial Intelligence (AI) & Other Emerging Technologies Committee. AI Patenting Handbook The AI Patenting Handbook may be found here and covers various topics regarding Artificial Intelligence (AI)... More
• The U.S. Patent Office provides Inventorship Guidance for AI-Assisted Inventions PatentNext Takeaway:  The U.S. Patent and Trademark Office (USPTO) recently issued examination guidance regarding patentability for artificial intelligence (AI)-assisted inventions. The guidance states that AI-assisted inventions are not “category unpatentable.” Instead, when a natural person provides a “significant contribution” to an invention, such an invention can be patentable even if an AI system contributed to the invention. While the guidance does not constitute law, it is grounded in law, i.e., the Federal Circuit’s so-called Pannu factors, which serve as a... More