On Wednesday, April 18, new USPTOUnited States Patent and Trademark Office. See also PTO. Director Andrei Iancu appeared for his first oversight hearing in front of the Senate Judiciary Committee. The Director was more open with the Committee compared to his confirmation process, leading to some interesting discussions.
Algorithms Are Already PatentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature.
A number of questions focused on the issue of patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. subject matter, also referred to as § 101. As noted by a number of Senators, artificial intelligence (AI), machine learning, and big data are huge areas of innovation right now. Google’s AI systems (including DeepMind and TensorFlow) have enabled key advances in many areas of machine learning. NVIDIA’s advanced GPU hardware enables faster, more efficient AI technology, and they have their own AI systems that run on top of their hardware. Intel is providing neural network hardware that can learn on its own. These technologies underlie recent advances in areas as diverse as natural language translation, self-driving cars, and medical diagnostics.
Unfortunately, there appeared to be an impression that algorithms aren’t patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature., and Director Iancu could have done more to clarify that that’s anything but the truth. Of course you can patent an algorithm. In fact, claiming a specific algorithm for solving a problem in your patent is one of the most effective ways to make sure that your invention passes § 101; that was the exact rationale in the McRO case. Essentially, you can patent “a specific means or method that improves the relevant technology,” but you can’t patent “a result or effect that itself is the abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010. More and merely invoke generic processes and machinery.” A specific algorithm that solves a technical problem is patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature.. But what isn’t patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. is claiming “using artificial intelligence to solve a problem”, any more than “using computers to solve a problem” was found patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. in Alice.
And that shouldn’t concern anyone interested in the future of AI. Alice hasn’t hurt the computer software industry—on the contrary, R&D spending on software and the internet has skyrocketed post-Alice. And the inability to patent “solve it with AI” isn’t going to harm investment in AI.
Real advances in AI are receiving patents every day. [1][2][3][4]. Utility patentAs distinguished from design patents and plant patents. Generally, references to 'patents' are to utility patents. 10,000,000 will likely issue this summer, and given the pace of innovation seen every day, there’s a good chance that patent will relate to AI. But what isn’t—and shouldn’t be—patentable is the sort of “do it with AI” patents that can block off whole areas of research and development, the sorts of patents that are favorites of patent trolls. And that’s exactly the situation we have today.
Inter Partes Review, Reviewed
Director Iancu mentioned that he is reviewing the inter partes review (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.) procedure, and that he wants to make sure we have a balanced IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. system. In order to do so, he expects to issue rules starting this summer.
But again, that balanced system is the system we already have. 58% of patents are unchanged after being challenged at the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.). This is true even though petitioners are selective in which patents they choose to challenge, with most litigated patents never going to the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA., meaning that only the most questionable patents are ever challenged. Even eliminating settlements, patents remain unchanged just as often as they’re struck down in their entirety because the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. will simply deny institution of meritless claims.
And IPRs generally arrive at the right decision, as affirmed by the Federal CircuitSee CAFC. On appeal, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. is upheld more than 75% of the time – this rises to around 90% of the time when only looking at the PTAB’s substantive analysis. The evidence is clear that the procedures and decisions of the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. are fair to patent owners and challengers alike.
The balanced IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. system Director Iancu is asking for is already here. Which raises a serious question—if Director Iancu is planning to change the system this summer, why? Chairman Grassley expressed his concerns regarding the Office deviating from Congress’s intent with respect to IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. That’s a real concern. With the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. system already operating fairly and effectively, making major changes simply to solve problems of perception, rather than actual problems, won’t improve the system.
Director, Please Respond
One of the concerns raised about Director Iancu when he was first nominated was how he would handle the political aspect of his role; after years as a law firm managing partner, how would he react to being subject to the oversight of Senators?
When pressed by Sen. Harris to provide a timeline for issuing guidance on § 101, Director Iancu refused to do so. He noted that § 101 is complex, and it’s hard to set specific timelines for when guidance comes out.
There’s nothing wrong with that answer in a vacuum, of course. The problem is that—in prepared remarks given the very next day—Director Iancu announced that the Office was releasing § 101 guidance that day.
Did the Director not know that guidance was being released the next day? Or did he know, and didn’t feel he owed that information to a member of his oversight committee? Either situation would be troubling. Hopefully Director Iancu will clarify why he didn’t answer Sen. Harris’s question.
As emphasized by Chairman Grassley, the PTOPatent and Trademark Office, informally used interchangeably with USPTO. Director’s role is to carry out the statutory mandates that Congress sets for them. This includes ensuring that patents issue only when they contain patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. subject matter, and that issued patents can be double-checked via the inter partes review procedure. It also includes providing his oversight committee with the information they request of him.
We’ll see if Director Iancu’s tenure at the Office lives up to that charge.