AI Systems and Drafting Patents: Enablement and Inventorship
Overcoming Patent Eligibility, Inventorship, and Enablement Challenges and Avoiding Rejections

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, April 22, 2021
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent practitioners on overcoming the challenges, including patent eligibility and enablement, when seeking patent protection for artificial intelligence (AI) systems. The panel will also discuss what can be done to anticipate and minimize the risks of Section 101 or Section 112 rejections.
Faculty

Dr. Mammen has more than 20 years of experience guiding Silicon Valley and global tech and life sciences clients in high-stakes patent and intellectual property litigation. He has substantial lead counsel experience and has led both large and small trial teams. Dr. Mammen has also served as lead counsel on appeals before the Ninth and Federal Circuits. He is an accomplished scholar, with significant teaching and academic experience. Dr. Mammen’s clients include companies in the software, telecom, microelectronics and pharmaceutical/biotech/life sciences sectors.

Ms. Blikshteyn is a Co-Chair of the firm’s Artificial Intelligence Practice. Her practice is focused on post grant proceedings before the U.S. Patent and Trademark Office, preparing and prosecuting domestic and international patent applications, as well as handling trademark and other IP disciplines. Ms. Blikshteyn focuses her patent practice on technology areas. Illustrative areas include artificial intelligence and machine learning, cloud computing, cyber security, web applications, map and navigation applications, point-of-sale systems, computer graphics, data structures, algorithms, distributed systems, client-server applications, CPU/GPU processor design, operating systems, mobile technologies, databases, database optimization, multimedia and video streaming, financial trading products, banking software, computerized auction software, healthcare systems, Internet systems, advertising software, wireless communication systems and applications, telecommunications systems, marketing applications, industrial control systems (ICS), cable systems, and smart grid and micro grid technologies.

Mr. Kukkonen has more than 20 years of experience in strategic intellectual property counseling, technology transactions, and litigation. Specifically, he advises clients on patent infringement and validity, preparation and prosecution of patent applications, prelitigation case assessment, active patent litigation, licensing and partnering agreements, IP due diligence, and brand protection matters. Mr. Kukkonen has prosecuted, analyzed, and litigated patents across various technologies including high-technology/software, medical devices, and energy technology. His experience in the high-tech arena includes database technologies, cybersecurity, artificial intelligence and machine learning, ridesharing/carpooling, robotics, enterprise software, cloud computing, big data, blockchains, mobile phone software and hardware, telecommunications, Internet of Things (IoT), semiconductors, nanotechnology, optical devices, computer and microchip architecture, virtual and augmented reality, and signal and image processing. In the area of medical devices Mr. Kukkonen has handled matters related to medication delivery devices, wireless health care, digital health, bedside patient monitors, breathing apparatus including respirators, incubators, infusion pumps, physiological sensors including cardiac monitors and blood pressure devices, ophthalmic technologies, and bone fixation plates and systems.
Description
Tesla's self-driving and self-parking cars, digital assistants such as Apple's Siri, Gmail's email filters and smart replies, social media streams, smart home devices, Netflix, and Spotify; these are all examples of technology that is used daily and through which AI systems are impacting our everyday life and decision making. AI systems present challenges for patent practitioners seeking patent protection.
What is patent eligible in the context of AI is not always clear. AI system inventions should be eligible for protection. Still, for patent eligibility purposes, such inventions must be described and claimed correctly given the current state of the law.
One hurdle for patent counsel is determining inventorship and who would hold the patent rights. Who invents something that is constructed in part by humans and in part by the system learning? Counsel may also face challenges when seeking to comply with the enablement requirement under Section 112. Structural claim limitations may be used to strengthen patents for AI systems and would benefit applicants by producing valid and enforceable patents.
Listen as our authoritative panel of patent attorneys examines the challenges under Sections 101 and 112 and what patent counsel can do to overcome those challenges. The panel will also discuss anticipating and avoiding Section 101 or Section 112 rejections.
Outline
- Challenges in drafting patents for AI systems under Sections 101 and 112
- What patent counsel can do to overcome those challenges
- Anticipating and avoiding Section 101 or Section 112 rejections
Benefits
The panel will review these and other key issues:
- What hurdles must patent counsel overcome to demonstrate inventorship with AI systems?
- How can patent counsel meet the requirements under Sections 101 and 112 in AI systems patent applications?
- What steps should patent counsel take to minimize the likelihood of Section 101 or Section 112 rejections?
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