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.

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.

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.

In late July, the United State Patent and Trademark Office (USPTO) entered into two agreements with the World Intellectual Property Organization (WIPO) that are noteworthy.

The first agreement, in the form of a memorandum of understating (MOU), is to undertake joint efforts to facilitate the resolution of disputes for standard essential patents (SEP), which are patents that are deemed essential for particular technical criterion or standards.  In today’s world, these SEPs are critical for wireless communication technologies, computer connection standards and automotive technology, to name just a few, but because technology is always evolving, the potential for disputes is always growing.

By signing this MOU, which will stay in force for five years from the date of signing, the USPTO and WIPO have agreed to cooperate on activities that will improve efficiency and effectiveness in the resolution of disputes regarding SEPs, as well as raising stakeholder awareness of alternative dispute resolution through WIPO’s Arbitration and Mediation Center and USPTO resources. 

The other agreement is a partnership between USPTO and WIPO GREEN, WIPO’s global green-technology platform, which was established in 2013.  The platform has 145 international partners that include major technology companies, intellectual property (IP) offices, business groups, research institutes and non-governmental organizations.

This agreement provides an online platform for technology exchange, which can connect those who provide green technology with those who need to use it for their industry to meet climate standards. It also should accelerate projects and collaborations for patents related to green technology.  The USPTO has joined 10 other IP offices around the world, which include offices in Brazil, Canada, Chile, Denmark, France, Japan, Lebanon, Morocco, Portugal and Switzerland.

Two USPTO initiatives in particular work well with WIPO GREEN.  The goal of the USPTO Climate Change Mitigation Pilot Program is to accelerate the examination of patent applications for initiatives that reduce greenhouse gas emissions.  The second will be the USPTO’s upcoming Patents for Humanity: Clean Energy Technology awards competition, which will be similar to the Patents for Humanity awards competition that concluded in 2021.

These agreements are relatively new, and we will continue to follow further developments and advise our clients and friends on future updated. As always, Ference & Associates is prepared to help guard against potential infringements, enforce your IP rights and litigate when necessary. 

Patents Can be Your Secret Weapon to Protect Your Big Data Operation The need for, and use of, data has permeated almost every industry, especially as it feeds artificial intelligence (AI) and machine learning (ML). For many companies, data is the essential ingredient necessary to create and tailor products or services. Some say data is a commodity now, and that one day it will be a more valuable commodity than property.

One can not have missed the news about major players developing smart speakers, intelligent drones and driverless cars, but the applications of AI and ML have not yet been fully contemplated. As of today, the majority of AI & ML patents are granted to the biggest American and Japanese tech companies, with Chinese companies closely trailing in third place.

Currently, data itself cannot be patented, but what is patentable is the method of processing, analyzing, and managing the data. This works for big data companies, since data is only as valuable as what you can do with it. Typically, patents are thought of as a tool for protecting tangible inventions or designs. But patents can also protect processes and that’s how companies shelter their data-related IP.

In the last decade, businesses, governments , and law enforcement agencies have dramatically increased their collection and use of data. This trend is accelerating, and with it is the focus on casting a wide net of protection. One strategy to protect data is to find a technical solution to a problem that uses the data. You can obtain a patent for the technical solution to a problem that was generated by the data–like an algorithm or filter–but it must be tied to the real world and “be useful.”

There are multiple examples of qualifying, patent-eligible algorithms in the software development sector–especially in the AI and ML arenas. The USPTO’s Artificial Intelligence Patent Dataset (AIPD), released in July 2021, identified AI in more than 13.2 million U.S. patents and pre-grant publications, citing an increase of annual AI patent applications by more than double from 2002 to 2018. In his commentary in Fortune this week , Drew Johnson of the National Center for Public Policy Research praised the USPTO’s Patent Trial and Appeal Board for tightening the rules on infringement, saying “Strong IP protections are essential to our economy as a whole.”

Today, AI and ML innovation takes up the bulk of a tech company’s resources, and data is the precious fuel that powers that innovation. AI and ML patent activity is expected to continue surging in 2022 and beyond. Companies that aggressively protect their intellectual property are on track to deliver as-yet unimaginable value across the globe and reap the profits.

If you have questions about how to utilize patents to protect your data-driven operation, contact the professionals at Ference & Associates at 412.741.8400 or contact@ferencelaw.com.  

Balancing intellectual property rights concerning the COVID 19 vaccine while serving the public good is the dilemma facing our global population today.  Failure to strike a balance creates a conflict between those living in developing countries and those in high-income nations. 

In response to the current vaccine access problem, South Africa and India have presented a proposal to the World Trade Organization (WTO) to waive intellectual property rights for COVID-19 medical products during the pandemic. While Europeans and North Americans account for over 50% of the administered vaccination population, poorer countries have only been able to vaccinate approximately 1% of their populations.

Proponents believe that temporarily waiving intellectual property rights for COVID-19 vaccines will help  ramp up production. Those countries opposing this concept argue that this would not result in increased production.

Why will an IP rights waiver not increase COVID vaccine production? 

What is involved Patents provide creators of new inventions, including innovative vaccines and medicines, with a limited-term monopoly.  Specifically, patents provide inventors a 20-year window, during which time other companies cannot reproduce the product.  The patent provides an incentive to invent and help recover the costs of research and development.  

It is no secret that vaccines generate enormous revenues.  According to Fierce Pharma, the COVID-19 vaccines should produce $18 billion per quarter for the drug companies.  In the 1950s, Dr. Jonas Salk developed the polio vaccine and was a recipient of the 1954 Nobel Peace Prize as a result.  How much money did Dr. Salk generate from his patent?  When being interviewed, he was asked who owns the patent.  Salk’s reply was, “…the people.  There is no patent.  Can you patent the sun?” He wanted the vaccine readily available to the public, which battled the disease that paralyzed over 35,000 children each year in the early 1950s.

Is this a legal or moral dilemma?

Balancing intellectual property rights is complex. Waiving patent rights during COVID is being addressed on an international level and raises both legal and ethical questions. With questions as complex as the public health questions created by COVID, it is not likely we will see an easy answer soon.

In today’s global marketplace, every product has potential global intellectual property issues. Ference & Associates has been managing complex patent and trademark portfolios in over 100 countries for decades.