“How to Navigate AI-Related Patent Applications After Ex Parte Desjardins”

Artificial intelligence continues to transform innovation across industries, but recent developments at the U.S. Patent and Trademark Office have raised the bar for obtaining patent protection for AI-related inventions. In a recent article for Today’s General Counsel, Marshall Gerstein attorneys Emma Oxford and Ryan Phelan examine the USPTO’s precedential Ex Parte Desjardins decision and its implications for companies seeking to protect AI-driven technologies.

“In a landmark move, the U.S. Patent and Trademark Office (USPTO) recently designated a specific case, Ex Parte Desjardins, as an official precedent and embedded it directly into its main examiner manual,” Emma and Ryan write. “Inventors and legal experts who have been closely tracking this space finally have a clearer, more predictable playbook for protecting AI innovations. Now it is time for legal departments to actually put those guidelines into practice.”

Emma and Ryan explain how the decision reflects the USPTO’s growing focus on written-description requirements in AI patent applications and offer practical guidance for applicants. The article outlines steps innovators can take to strengthen patent filings, including providing greater technical detail, clearly describing AI models and training data, and ensuring that patent specifications adequately support claimed inventions.

Read their column in Today’s General Counsel here.