Computer-Related and AI Inventions: Avoiding Patent Eligibility and Means-Plus-Function Traps

This CLE webinar will guide patent counsel on how to avoid the Section 101 and 112 traps that await when patenting computer-related inventions and, specifically, AI. The panel will examine the Section 101 risks and how the unwitting invocation of Section 112's means-plus-function (M-P-F) can lead to invalidity.  

Computer-implemented inventions have faced an uphill climb. The Electric Power Group (EPG) line of cases poses a particular threat to AI patents. In fact, using EPG, the Federal Circuit has found unpatentable every machine learning patent that has come before it, including Recentive Analytics Inc. v. Fox Corp., Rensselaer Polytechnic Institute v. Amazon.com Inc. (nonprecedential), and Dental Monitoring SAS v. Align Technology Inc. (nonprecedential).  

AI inventions can satisfy patent eligibility under Section 101, but particular attention needs to be paid to drafting both the specification and claims. The best chances for success are when the specification describes and the claims recite how the invention (1) improves the operation of the computer itself, (2) provides a technical improvement over the prior art, or (3) solves a technical problem with a technical solution.  

Also, Fintiv Inc. v. PayPal Holdings Inc. demonstrates the invalidity trap that awaits when Section 112(f)'s M-P-F is unintentionally invoked. A claim element can invoke M-P-F even when the word "means" is not used. If a claim element is interpreted as M-P-F and the patent specification is functionally drafted (failing to disclose the corresponding structure, material, or acts), the Federal Circuit will find the claim invalid.  

The solution to satisfying both Section 101 and avoiding invalidity per unintentional invocation of M-P-F is drafting a great specification and claim set. Listen as our authoritative panel of patent attorneys ddescribesexactly how to do that.