Patents on AI-Assisted Inventions and New USPTO Guidance: Patentability, Inventorship, Significant Contribution

Ms. Ettinger counsels life sciences clients on a variety of intellectual property matters. She excels at due diligence studies, loss of exclusivity analyses, and agreement drafting in connection with buy- and sell-side transactions and collaborations for her clients, which range from preclinical biotechnology companies to large clinical pharmaceutical companies. Ms. Ettinger regularly advises on Hatch-Waxman issues, biosimilars strategy, and litigation and post-grant proceedings, such as inter partes reviews. She also manages the worldwide prosecution of numerous life sciences patent portfolios. Ms. Ettinger has extensive experience counseling clients in IP matters in areas including gene editing, immunotherapies, regenerative medicine, rare diseases, pharmaceutical formulations, genetically modified plants and seeds, enzyme and other large-molecule technology, and small-molecule chemistry. She routinely works with the firm’s corporate team to counsel international corporations in preparing their intellectual property portfolios for U.S. cross-border securities transactions.

Mr. Pratt primarily focuses on the prosecution and litigation of software, mechanical and medical device patents in addition to trademark registration. He assists technology-driven clients with developing effective strategies to maximize the protection that intellectual property can provide to companies both large and small. Mr. Pratt also provides counsel for companies looking to broaden their IP portfolio to cover both where the client currently is and where the client is looking to go in the future. He has drafted and prosecuted patent applications in a variety of software-focused technology areas, including AI, machine learning algorithms, user interfaces, video coding, VR systems, networks, blockchain and various other applied algorithms dealing with areas including weather detection, medical devices, personal identification, market forecasting, automobile navigation and bug detection. Mr. Pratt also provides assistance with infringement analysis for litigation and due diligence in connection with MA&s.

With an IP practice encompassing mechanical devices, remote monitoring and control systems, telecommunications systems, e-commerce services and financial services, Mr. Wood advises clients on complex issues of claim construction, infringement, and validity in both patent litigation and post-grant review proceedings. He also provides advice to clients on patent portfolio management and strategy. Mr. Wood’s clients come from a broad array of technology sectors and include medical device manufacturers, consumer goods retailers, financial institutions, computer and software technology companies, and e-commerce technology providers. He has significant patent litigation experience in the Eastern District of Texas, the District of Delaware, the Eastern District of Virginia, and before the International Trade Commission. He has also participated in several Federal Circuit appeals. Additionally, Mr. Wood has significant patent prosecution and post-grant proceeding experience with the USPTO.