PatentNext

A Patent and Intellectual Property (IP) law blog focusing on Next-Generation and New Age Technologies

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By: Ryan N. Phelan

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Ryan N. Phelan

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PatentNext Summary: In some instances, software-based patent applications can fail to include a sufficient algorithm describing “how” the software interacts with the underlying hardware of the invention. This can lead to issues in both prosecution and litigation, creating unnecessary expense and/or hardship. Therefore, as a general rule, software-related patents should include an algorithm. An algorithm provides support for a software-related patent pursuant to 35 U.S.C. § 112(a), including (1) by providing sufficiency of disclosure for…
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PatentNext Summary: The development of modern medical devices increasingly includes the use of software for performing sophisticated diagnostic or treatment-related functions. In fact, the U.S. Food and Drug Administration (FDA) now defines specific categories of software-based medical devices that include “Software as a Medical Device (SaMD)” and “Software in a Medical Device (SiMD).” In a similar way, courts review patents directed to software-based medical devices across several categories, which include inventions having “particular machines” (e.g.,…
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PatentNext Summary: Computer and software-implemented inventions, especially in the field of Artificial Intelligence (AI), have experienced explosive growth in both Korea and the U.S. This article compares the similarities and differences between the patent laws of the two countries and identifies considerations when drafting a software-related patent application, with a focus on AI as an example technology. This article is co-authored by Seong Tahk AHN and Ryan N. Phelan.…
Programming code abstract technology background of software developer and Computer script
PatentNext Summary: As a general rule, software-related patents should include an algorithm. An algorithm provides support for a software-related patent in a variety of ways, one of which is to provide support for a claim determined to be a “means-plus-function” (MPF) term pursuant to 35 U.S.C. § 112(f). Without such support, an MPF term can be held invalid pursuant to 35 U.S.C. § 112(b).…
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PatentNext Summary: Currently, patent laws require human inventors. For this reason, no country or legal jurisdiction presently allows an Artificial Intelligence (AI) to be an inventor. Such patent laws, however, are typically decades old and we can expect continued debate, and possible legislation, on the topic of whether an AI can be an inventor. SUMMARY UPDATE (08/9/21): Since the initial post, South Africa has issued the world’s first patent that listed an AI inventor. Also,…
PatentNext Summary: AI-related inventions have experienced explosive growth. In view of this, the USPTO has provided guidance in the form of an example claim and an “informative” PTAB decision directed to AI-related claims that practitioners can use to aid in preparing robust patent claims on AI-related inventions. The below article provides additional details. *** Artificial Intelligence (AI) has experienced explosive growth across various industries. From Apple’s Face ID (face recognition), Amazon’s Alexa (voice recognition), to…
PatentNext Summary: Because AI is a relatively newer technology, court cases analyzing AI-related patents have been few in number. Given the increased numbers of AI patent filings, as recently reported by the USPTO, we can expect to see future court cases involving AI-related patents. We can also expect that courts will analyze these AI-related patents per the two-part Alice with the same scrutiny as we have seen for more general software-related patent cases. Introduction In…
PatentNext Summary: When preparing a patent application for a software or a computer-implemented invention, a best practice includes describing, in the patent specification, how the software or computer-implemented invention improves an underlying computing device. Examples include describing how software or computer-implemented invention improves the speed or efficiency of the underlying computer device and/or reduces its processing needs or memory usage.   The below article provides additional details. *** The Importance of Describing an “Improvement” for a…
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Are Software Inventions Patentable?
PatentNext Summary: Software-related inventions are patentable. Considerations for patenting software-related inventions include:  Whether the patent claims fall into one of the four categories of “inventions patentable” (e.g., “a process”); and Whether the patent claims recite (or do not recite) a judicial exception (e.g., an “abstract idea”) as described by the U.S. Supreme Court in its often cited  “Alice” decision. The below article provides additional details. *** Software increasingly empowers our everyday lives. From mobile apps…