Artificial intelligence continues to become more integrated into processes and systems of all kinds. The proliferation and refinement of artificial intelligence large language models and use thereof has allowed for additional uses of such models, including in the legal field. This article explores initial efforts to integrate AI models with the patent prosecution process, in particular.

The patent prosecution process generally includes two distinct aspects: the drafting of the patent application to be filed with the United States Patent and Trademark Office (USPTO) and the prosecution of the application in order to obtain a patent. The use of AI models has increased in the prosecution space with at least some models being used to assist in generating templates for responding to Office Actions and attempting to generate remarks responsive to the Office Actions. However, claim amendments during prosecution and the drafting of the patent application have generally been left to human patent practitioners due to nuances at the intersection of legal terminology, claim interpretation, court case decisions, and patent drafting requirements provided by the USPTO.

Nonetheless, AI could feasibly be leveraged to assist in drafting portions of the patent application. The first area of the patent application where AI could be leveraged is the background section of the patent application. This section generally discusses the field relating to the patent application. Since this section is not particularly specialized in a patent application drafting sense, the AI model can be easily given a prompt to generate a paragraph or two describing the field relating to the patent application.

AI could also likely assist in defining the “problem” that the invention or technology attempts to solve. The problem is generally described near the beginning of the detailed description, and the narrative describes how the current state of the field is deficient. This section may also identify current solutions to the problem. Essentially, this section establishes the problem that is being solved by the current application and how the conventional solutions are failing to adequately solve the problem. While a little more specialized than the background section, this section is not so specialized to patent drafting that the AI model would struggle with assisting in drafting such a section, particularly if the human providing the prompt is skilled in prompting AI models.

After these sections, the detailed description gets more specialized to patent drafting and particularly to the invention being described within the specification. The challenge presented is that AI models, which are based on known information, are being asked to provide information regarding a novel solution. Additionally, there are concerns related to providing new or sensitive information to a third-party who is hosting the model and there may also be concerns regarding export controls, foreign filing licenses, and national security interests.

In other words, while AI models can still be useful in assisting with drafting the remaining portions of the detailed description intended to describe the aspects of the invention, the use of AI with respect to the drafting of the patent application should be carefully considered and performed. A skilled, human user could draft prompts to create initial drafts that the human user could utilize and refine, either manually or utilizing generative AI. Such a method may be particularly useful for the portions of the detailed description that focus on known technology. The patent practitioner can instead focus on the novel or unique portions of the detailed description, thereby creating a hybrid detailed description that is partially generated by the AI model and partially generated by the human patent practitioner.

To date, drafting claims and making claim amendments during prosecution have been left to human patent practitioners. Claims are such a unique aspect of patent prosecution that it is difficult to train AI models on how best to either draft claims or amendment claims in response to an Office Action.

Particularly in drafting patent claims, a patent practitioner starts with a disclosure by an inventor. The practitioner must understand what the invention is and identify the unique features of the invention to be included within the claims. A good patent practitioner walks a line between getting just enough in the claims to obtain an allowance and adding too much information which result in very narrow claims that are only marginally useful to the patent holder. Strategy is involved. Additionally, the requirements placed on patent applications, legal language that must be used, and other nuances, make drafting claims a very subjective process, particularly for good claims. Therefore, the adoption of AI models in the claims process may take some time.

For now, the human patent practitioner retains the critical function of reviewing the patent documents prior to submission. It is incumbent upon the human to make sure that the details are technically accurate, that they accurately reflect the invention contemplated by the inventors, and that they meet all requirements for patent applications established by the United States Patent and Trademark Office and any applicable court cases.

In conclusion, the human practitioner still serves a critical purpose and cannot be completely replaced by the AI model at this time. However, AI models can be leveraged creatively to assist in various aspects of drafting patent applications in a cooperative relationship with human patent practitioners.

Jodie Spade is patent lawyer with Ference & Associates. She has significant experience with intellectual property in artificial intelligence.

Professionals in the aviation and aerospace industries are increasingly concerned that the cause of recent safety issues are a result of counterfeit titanium components.

What is Titanium?

Titanium is a chemical element that when alloyed with another metal like steel or aluminum provides a strong, lightweight and corrosion-resistant material that is instrumental in the aerospace and aviation industries, among others.

It was recently discovered that some titanium components used in aircrafts have developed small holes that appear to be caused by corrosion. This does not happen with genuine titanium. Investigators believe that the problematic components are a result of counterfeit titanium, supplied to Boeing, as well as other manufacturers, using fake documentation, as first reported in the New York Times.

While the investigation by both the Federal Aviation Administration (FAA) and Boeing is still ongoing, if this counterfeiting is widespread, the implications for the aviation and aerospace industries presents a serious safety issue for an industry that has had several high-profile problems in the past year. If there are questions about all titanium components on all aircraft,  there may be significant repercussions for consumers.

The number of planes available for transportation has already been restricted due to the incidents such as the Boeing plane that lost its door mid-flight. If additional planes need to be inspected due to the possible presence of bogus titanium, it will limit the number of flights available, which will likely result in higher fares for the limited available flights and other travel woes.

In addition to aviation, titanium is used in biomedical applications like artificial hips, knees and heart valves because of its lightweight, strong and durable qualities. There is nothing to indicate that counterfeiting extends to biomedical industries, but the investigation about where this counterfeit titanium has come from is just beginning.

Identifying the fake documentation and tracing it back to a source will provide some additional answers about how widespread this problem is. It will go a long way to calming nerves about safety in all of the uses of titanium. We will continue to report on this issue as more information becomes available.

The Amazon Patent Evaluation Express (APEX) program is touted as a speedy, low-cost way to determine if products sold on Amazon.com infringe on any patents. It’s a major advantage for someone claiming that a product infringes on their patent because APEX can deal with multiple products at one time.

What is the Amazon APEX Process?

The APEX process was at the center of a dispute between SnapPower, a Utah-based company, and Lighting Defense Group (LDG), a Delaware company with its principal place of business in Arizona. In short, both companies, who do business on Amazon.com, produce electrical receptacle covers (among other things), and LDG initated an APEX Agreement against SnapPower over a specific receptacle cover that they claimed infringed on LDG’s patent. APEX notified SnapPower about the ruling and presented them with options to settle the dispute. After a conference call failed to settle the matter, SnapPower filed an action in federal court in Utah for declaratory judgment for noninfringement. LDG filed to dismiss the action for lack of personal jurisdiction, and a lower court granted LDG’s motion, however, SnapPower appealed, and the United States Court of Appeals, unpersuaded by LDG’s arguments, reversed and remanded the lower court’s decision.

While the Appeals Court states in their ruling that they do not believe this ruling will “open the floodgates of personal jurisdiction,” some observers believe this ruling creates a tremendous disadvantage for patent owners because, in effect, it rules that anyone claiming a patent infringement must file a declaratory judgment suit in the offending party’s home state. This can cause the patent owner to have to file multiple suits in several different jurisdictions, which may be unfriendly to their arguments.

Since this case has been remanded to the lower court for further action, we likely have not heard the final word yet, but in the time being, patent owners using the APEX process may need to be aware of the need for additional actions to settle any possible patent infringement dispute.

The United States Patent and Trademark Office (USPTO) has proposed new patent fees for 2025, which will include significantly increased fees in most cases, and is soliciting written comments from the public before June 3, 2024.

Authorized to propose new fees under the Leahy-Smith America Invents Act (AIA), the USPTO is claiming these increased fees are necessary to provide the agency with revenue to recover the costs of patent operations in the future. The increases are based on the agency’s projections for the number of patent applications that will be processed in the coming years, using estimates found in the agency’s Fiscal Year 2025 Congressional Justification and its Strategic Plan for 2022-2026.

For example, a Basic Filing Fee for Undiscounted Entities will rise from $220 to $300. Basic filing fees for small and micro entities will increase, too, although the fee will be less. It is still a significant increase, however, rising from $88 to $120 for small entities and $44 to $60 for micro entities. All of these increases represent a 36 percent increase in filing fees, and fees for other Design applications have increased more than that.

Fees for Excess Claims are rising by 25 percent, pretty much across the board, with the exception of claims of more than 20, which are doubling. Notably, however, fees for Extension of Time for Provisional Applications are being reduced by varying amounts.

For a look at all the proposed fees for 2025 and the procedure for submitting written comments, please visit the Federal Register by following this link: https://tinyurl.com/4ntreh2u.

In Other USPTO News:

In March, the USPTO issued a memo for all patent examiners reiterating the agency’s current practices and resources for examining means-plus-function and step-plus-function limitations.  According to the USPTO, the memo is meant to reinforce for the examiners the “importance of properly interpreting such limitations and of making the record clear as to (the examiner’s) interpretations.” The complete memo can be found by following this link: https://tinyurl.com/5yjxmej2.

Eye redness can usually be remedied easily with over the counter (OTC) eye drops, but there’s concerning news about copycat eye drops that could cause eye irritation, an infection or ultimately cost people their eyesight.

The Food and Drug Administration (FDA) has received numerous complaints from consumers about off-brand eye drops causing eye irritation instead of providing relief. These copycat eye drops are often packaged very similarly to name brands but priced much cheaper.

In particular, the FDA is warning consumers about certain brands of eye drops – South Moon, Rebright, and FivFivGo – that are packaged in such a way that they could be mistaken for Bausch + Lomb’s Lumify eye drops, which is FDA-approved for the treatment of eye redness.

Even worse, when the FDA tested samples of South Moon and Rebright, they discovered South Moon’s samples to be tainted with bacteria that could lead to an antibiotic resistant infection. While the FDA didn’t find similar contamination in Rebright’s sample, they still advised consumers to avoid this brand. For whatever reason, the FDA didn’t test samples from FivFivGo.

In addition to claiming to relieve redness, some off brands also entice consumers because they make claims to treat more serious eye conditions, like glaucoma, where the usual treatment involves prescription medications – not OTC meds – and sometimes surgery.

The country of origin for these copycat eye drops cannot always be verified, but there were eight separate recalls of eyecare products in 2023, including a recall in November of 28 different eyecare products after investigators discovered unsanitary conditions in a manufacturing plant in India. Some of these recalls occurred after reports of serious eye injuries that even resulted in a loss of eyesight in a number of people.

It is important to note that generic pharmaceutical products can be perfectly safe to use in place of the more expensive name brands. This is especially true when it comes to prescription drugs, where a generic substitute must pass the same standards from the Food and Drug Administration (FDA) that the name brand does. The FDA advises consumers to exercise caution when buying eye drops or any healthcare products online and to only purchase products from reputable retailers.

There are many reasons to rebrand a company. Sometimes a rebrand is undertaken because the company has added – either through a merger or outright acquisition – additional products or services that aren’t reflected in the old brand. Other times, a company may go through a rebrand because the old brand needs to be refreshed to appeal to either a broader or younger (sometimes both) audience.

Whatever the reason for the rebrand, it needs to be done with care. New names or logos may infringe on another company’s intellectual property, and it could become a matter for the courts to decide.

Take the case of Meta, the company formerly known as Facebook. In the past few years, Facebook acquired other social media platforms – most notably Instagram and What’s App – to add to its portfolio and felt that the name Facebook no longer reflected all that Facebook had become. Two years ago, the name was changed to Meta Platforms, or Meta for short, and a new logo was created that looks like a drooping infinity sign is also designed in such a way to look similar to a letter “m” for Meta.

In addition to some general criticism at the time about the choice of Facebook’s new name, there were also several smaller companies that had already trademarked the name “Meta.” The newly named Meta has thrown a ton of money at this trademark battle and will continue to do so, but it may turn out that the new logo will create the most problems for it.

In mid-December, a company known as MetaX, LLC, which is known for creating virtual and augmented reality “experiences” and had previously filed a lawsuit to prevent Meta from selling their own virtual reality products, filed a trademark opposition against Meta, claiming that Meta’s new logo is too similar to their own, and thus infringes on MetaX’s own trademark. While disputes like this are often settled before reaching a courtroom, some experts believe that this logo fight may prove even more expensive of a legal battle for Meta than the previous lawsuits. The final outcome remains to be seen, but it provides a great cautionary tale for any company seeking to rebrand itself.

Artificial intelligence or “AI” is becoming increasingly common and is being utilized in devices and computations from personalizing displayed advertisements to robots that provide personalized care for patients. Artificial intelligence allows a system to be trained and make predictions and decisions regarding information that was not previously seen by the AI system. This is as close as we have gotten to emulating the human mind. While such systems do have limitations and there is controversy surrounding the use of artificial intelligence, it is hard to deny that it is a field of large interest and one that continues to grow.

The main component of AI systems are the AI models that are utilized to make decisions based upon inputs to the system. In many cases, artificial intelligence systems utilize multiple AI models, with each of the models performing some part of the computation to make the output prediction. Much like people, different AI models have different strengths and weaknesses. Thus, different models that are programmed for a particular purpose may perform that purpose within an artificial intelligence system and provide outputs to other models to perform a different function or computation on the output until the desired final prediction is reached.

Developing AI models is time-consuming, requires large amounts of training data to train the model(s), and often requires specialized knowledge. Therefore, it is no surprise that model developers are looking for options to assist in protecting their work product. Some of the most common options for protecting AI models are trade secrets, copyrights, and patents. For a trade secret, the developer has to keep the information related to the model secret and not tell anyone about it. However, if someone is able to backwards engineer the model, which is very common in the field, it is no longer a secret and there are few to no options to pursue redress for stealing of the model. Once a secret is no longer a secret, it is impossible to make it a secret again.

One or more patents may be the best way to protect an artificial intelligence system, but some downsides are that the information has to be disclosed to the public and the length of protection is finite. However, an intellectual property attorney with experience in the AI field will tell you that, while there are requirements related to sufficient disclosure, not everything about the AI system must be described in significant detail within a patent application. Additionally, the disclosure of some information within a patent application is not particularly helpful in getting a granted application and could be kept out of the disclosure while still meeting patent requirements. What information can be kept out of the patent application depends on the type of system that a person is trying to patent.

Thus, a combination of techniques may be the most effective method for protecting intellectual property associated with artificial intelligence systems. Generally, it may be favorable to apply for one or more patents regarding an application of the artificial intelligence system and any unique characteristics about the models themselves. With respect to the code utilized to program the AI system and the training dataset(s), keeping this information a trade secret or protected under a copyright may be the right answer. However, each situation is unique and consultation with an experienced intellectual property attorney is always the best answer.

In summary, the most effective approach to protecting intellectual property associated with AI systems or models may include the use of one or more different intellectual property protection techniques.

The fierce competition between athletic shoe companies now extends beyond the playing fields to the courtroom.

Nike has sued two rival shoe companies, New Balance and Skechers, in Federal Court, for patent infringement over Nike’s Flyknit technology. In its papers, Nike says they filed nine patents for Flyknit technology between September 2012 and July 2023.

According to Nike, Flyknit technology is designed so the upper portion of the shoe will be lightweight, breathable, and stretchable, but strong enough to still offer support. Furthermore, Nike said its patented technology helps them to manufacture their shoes with fewer materials and less waste, and they are asking the court for two actions: first, to order New Balance and Skechers to stop selling particular lines of their shoes and second, they are asking for an unspecified amount of damages from their rivals. 

At the center of the dispute are running, basketball, and soccer shoes, specifically New Balance’s Fresh Foam and Fuel Cell lines of shoes and Skechers Ultra Flex and Glide Step brands. Unsurprisingly, both companies believe they haven’t violated Nike’s patent rights.

In a statement, New Balance said it “fully respects other competitors’ intellectual property rights but disagreed that Nike owns the exclusive right to technology that, New Balance claims, has “been used in the industry for decades.”

This is not the first time that Nike has sued competitors over its Flyknit technology.  They have sued Adidas, Puma, and Lululemon for patent infringement. Puma and Adidas settled their cases in 2020 and 2022 respectively, but the case against Lululemon, which was filed earlier this year, is still pending.

More than 150 years since the Battle of Gettysburg, a new battle may be brewing over ownership of the Gettysburg Area School District’s (GASD) logo.

The current iteration of the logo – an upper case “G” inside of an arrowhead to represent the district’s Warriors nickname – was created ten years ago by a school district employee but was never registered as a trademark.

No one gave it a second thought until Kierstan (Demps) Belle, a candidate for Gettysburg city council and a 2010 graduate of the district, announced that she paid $50 and filed an application with the Pennsylvania Bureau of Corporations and Charitable Organizations to acquire the rights to the logo, which she says was approved in September. Belle says that for GASD to continue to use the logo it will need to pay her royalties and agree to special conditions. She says that she wants to use the royalties to fund student activities that have been cut or underfunded, and the special conditions she wants the district to comply with are values that support “the Warrior Way.”

Local public reaction has been decidedly against Belle, with some of the more civil comments labeling her attempt to receive royalties “extortion.”  Attorneys for GASD confirmed they sent Belle a “cease and desist” letter but haven’t made any further comment about the situation.

For her part, Belle has made comments to local media that indicate she might be wishing for a do-over with the way her idea has been unveiled, and that she will say more in the near future.

Whether Belle’s intentions were good or not, legal experts concur that this is a common mistake made by people who don’t understand trademark law and expect registering a trademark that they have never used can generate money for themselves or their organization. 

In an effort to crack down on fraudulent trademark filings, the United States Patent and Trademark Office (USPTO) will be collecting and verifying domicile addresses for all applicants.

This comes as a result of the USPTO’s trademark enforcement team finding thousands of foreign applicants using fake U.S. addresses or fraudulently using the address of a U.S. attorney without the attorney’s knowledge or permission.  In the course of this investigation, more than 18,000 trademarks have been terminated for invalid applications, and more than 3,200 registrations have been sanctioned.

To make it clear to all applicants what is an acceptable address and what is not, the USPTO has published an examination guide that identifies the steps that examining attorneys and post-registration examiners will follow to determine if an address is valid for use in a trademark application.

The examination guide makes it clear that red flags will be attached to applications that do not identify an actual street address, but instead use a P.O. box, “care of” (c/o) addresses, commercial mail receiving agency (CMRA) addresses, registered agent (RA) addresses, private mailboxes (PMB), Army Post Office, Fleet Post Office, diplomatic post offices and highway contract route addresses. The USPTO claims these addresses “generally may not serve as domicile addresses because they do not identify the location of the place the person resides and that is intended to be the person’s principal home (for a natural person) or the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.”

Foreign entities that apply for a trademark must have a qualified U.S.-licensed attorney to represent them or the USPTO will issue an office action requiring the foreign entity to hire a qualified U.S. attorney and provide supporting documentation that the US street address is valid.

The USPTO recognizes that trademark counsel can change multiple times over the life of a trademark, and states that the domicile address can help the examiners determine if a new US-licensed trademark attorney is required.  The Exam Guide can be found here:  https://tinyurl.com/4j2wb7t2

If you have any questions or concerns about protecting your intellectual property under copyright law, an attorney at Ference and Associates, LLC, will be happy to help. Please contact us by phone at (412) 741-8400, or email at contact@ferencelaw.com.