I am excited to announce the publication of the Intellectual Property Owner (IPO)’s white paper on “Protecting Inventions Relating to Artificial Intelligence: Best Practices.

The paper was authored by the IPO’s Software Related Inventions Committee and the Artificial Intelligence (AI) & Other Emerging Technologies Committee, of which I am a member.

I had the honor of co-authoring this paper with my fellow IPO committee colleagues Frank Chau, Sumon Dasgupta, John Kind, Alex Bridge, Thomas Burton, Michael Carey, Christina Huang, Dave Kincaid, Jennifer Lacroix, Giordana Mahn, and John Pienkos. 

The paper may be found here and covers various best practices for protecting Artificial Intelligence (AI) inventions. These include: 

  • How to get the most out of a disclosure interview with AI inventors. For example, how to work with inventors to prepare a strong AI patent that will hold up during prosecution at the Patent Office and in the courts.  
  • Ethical issues to consider when preparing AI invention disclosures. For example, how AI models can be improperly trained with bias, and how to remove bias by taking into consideration data used for training AI models (“garbage in, garbage out”).
  • International Considerations. Including AI considerations from the European Patent Office (EPO), Korea, Japan, China. 
  • Inventorship Issues. Whether an AI can be an “inventor” as defined by various patent laws.
  • Prosecution of AI inventions. How to prepare AI patents with strategies to predict and overcome possible rejections under 35 U.S.C. §101 and §112.
  • Drafting AI Claims that are detectible and related Trade Secret issues. How to draft AI patent claims that can be detected for patent infringement purposes, or whether to keep AI-related information a trade secret instead. 
  • Enforcement of AI-related inventions. How U.S. courts have treated AI-related inventions through the years since the Supreme Court’s landmark decision regarding patent subject matter eligibility in Alice Corp. v. CLS Bank International (“Alice”).

I am further honored that some information incorporated in the IPO white paper came directly from PatentNext articles, including the following:

I look forward to working on this year’s upcoming paper to advance these topics further. 

Subscribe to get updates to this post or to receive future posts from PatentNext. Start a discussion or reach out to the author, Ryan Phelan, at rphelan@marshallip.com or 312-474-6607. Connect with or follow Ryan on LinkedIn.

Photo of Ryan N. Phelan Ryan N. Phelan

PatentNext is moderated by Ryan N. Phelan, a registered U.S. Patent Attorney and Software and Computer Engineer. Ryan previously worked in the IT industry as a consultant at Accenture, where he regularly consulted Fortune 500 companies in software and computing technologies. Ryan is…

PatentNext is moderated by Ryan N. Phelan, a registered U.S. Patent Attorney and Software and Computer Engineer. Ryan previously worked in the IT industry as a consultant at Accenture, where he regularly consulted Fortune 500 companies in software and computing technologies. Ryan is featured in the IAM Strategy 300 & 300 Global Leaders guides, and was selected for inclusion in The Best Lawyers in America© list in the practice area of Patent Law. Ryan is also an adjunct professor at Northwestern University’s Pritzker School of Law where he teaches coursework on Patenting Software Inventions. Learn more about Ryan.