Matthew R. Carey, Partner and Chair, Electrical & Computer Technologies

In an interview with Law360, Marshall Gerstein Partner and patent attorney Matt Carey provides perspective on a recent Patent Trial and Appeal Board decision that reverses an examiner’s patent eligibility rejection of an AI patent application. The board found that the invention, by AI company 6Sense Insights Inc., was a patent-eligible improvement in training AI models. The decision, known as Ex parte Carmody after one of the inventors, builds on a precedential decision by the U.S. Patent and Trademark Office, Ex parte Desjardins, and provides useful insight into how those seeking patents on AI-related inventions can push back on eligibility restrictions under Section 101 of the Patent Act.

Matt told Law360 that the new decision “provides a lot of clarification,” allowing attorneys to advise on improvements to AI technology that the USPTO has said can be considered patent eligible. Matt noted that the specification, or written description of the invention, should “describe deficiencies or maybe challenges with existing AI-based technologies. You want to have your specification discuss how the invention improves on those shortcomings, and then you want to have your claims explicitly recite the improvement.”

While there are still questions about the final word on patent eligibility, Matt noted that the PTAB’s Carmody decision was brief, with only one page of analysis that largely relied on Desjardins. “It was open and shut, there's no ambiguity here, this is the law of the land, and we're following it now.”

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