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Artificial Intelligence and Subject Matter Eligibility In U.S. Patent Office Appeals
Artificial intelligence is changing industry and society, and metrics at the U.S. Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See "Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents," Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.
This article explores USPTO handling of Alice issues involving artificial intelligence and machine learning through a sampling of recent Patent Trial and Appeal Board (PTAB) decisions. See Alice Corp. v. CLS Int'l, 134 S. Ct. 2347 (2014). Some decisions dutifully applied USPTO guidelines on subject matter eligibility, including Example 39 thereof, to resolve appeal issues brought to the PTAB. In one case, the PTAB sua sponte offered eligibility guidance even with no Alice appeal issue before it. These decisions inform strategies to optimize patent drafting and prosecution for artificial intelligence and machine learning related inventions.
"Generic Machine Learning Algorithm"
In Ex parte Hussain, Appeal No. 2020-005406 (PTAB Feb. 18, 2021), the PTAB considered the subject matter eligibility of claims reciting a "machine learning algorithm" in relation to mitigation of risk of consumer default on an online transaction. Representative claim 1 recited as follows:
- A computer-implemented method, comprising: under the control of one or more computer systems that execute instructions,
providing executable instructions to a client computing device associated with a user that, as a result of being executed by the client computing device, causes the client computing device to:
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Overview of Regulatory Guidance Governing the Use of AI Systems In the Workplace
Businesses have long embraced the use of computer technology in the workplace as a means of improving efficiency and productivity of their operations. In recent years, businesses have incorporated artificial intelligence and other automated and algorithmic technologies into their computer systems. This article provides an overview of the federal regulatory guidance and the state and local rules in place so far and suggests ways in which employers may wish to address these developments with policies and practices to reduce legal risk.
Is Google Search Dead? How AI Is Reshaping Search and SEO
This two-part article dives into the massive shifts AI is bringing to Google Search and SEO and why traditional searches are no longer part of the solution for marketers. It’s not theoretical, it’s happening, and firms that adapt will come out ahead.
While Federal Legislation Flounders, State Privacy Laws for Children and Teens Gain Momentum
For decades, the Children’s Online Privacy Protection Act has been the only law to expressly address privacy for minors’ information other than student data. In the absence of more robust federal requirements, states are stepping in to regulate not only the processing of all minors’ data, but also online platforms used by teens and children.
Revolutionizing Workplace Design: A Perspective from Gray Reed
In an era where the workplace is constantly evolving, law firms face unique challenges and opportunities in facilities management, real estate, and design. Across the industry, firms are reevaluating their office spaces to adapt to hybrid work models, prioritize collaboration, and enhance employee experience. Trends such as flexible seating, technology-driven planning, and the creation of multifunctional spaces are shaping the future of law firm offices.
From DeepSeek to Distillation: Protecting IP In An AI World
Protection against unauthorized model distillation is an emerging issue within the longstanding theme of safeguarding intellectual property. This article examines the legal protections available under the current legal framework and explore why patents may serve as a crucial safeguard against unauthorized distillation.