Subject Matter Eligibility and AI: USPTO Guidance, Court and PTAB Treatment, Meeting Eligibility Requirements
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Tuesday, February 28, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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This CLE webinar will guide patent counsel on subject matter eligibility issues in AI patents. The panel will examine the most recent USPTO eligibility standard and how to address it. The panel will also discuss how the courts and the PTAB have addressed subject matter eligibility in AI cases. The panel will offer best practices for navigating subject matter eligibility and drafting to satisfy patent eligibility requirements.
Mr. Kiklis focuses on PTAB litigation as well as district court patent litigation. He also handles Federal Circuit appeals from his cases. With an extensive background in computer science, his technological focus is on software patent matters. Mr. Kiklis frequently handles high stakes matters, having been involved in several cases in which over $1 billion was at stake.
Mr. Kunin represents clients in post-grant patent proceedings at the U.S. Patent and Trademark Office. He also serves as an expert witness and consultant on patent policy, practice and procedure. During his tenure at the USPTO, he served in many executive positions, including as Deputy Commissioner for Patent Examination Policy.
Mr. Maier is a registered patent attorney and practices all aspects of patent prosecution and patent litigation, including inter partes review proceedings and ex parte reexamination at the USPTO, international patent portfolio development and management, and opinion work. He has experience working across a variety of technologies, including electrical and computer engineering, software, mechanical engineering, and medical device technologies. In his practice, Mr. Maier has successfully drafted hundreds of issued patents in diversified technologies and prevailed on numerous patent appeals at the USPTO.
The USPTO determines the subject matter eligibility of AI patent applications, based on Alice and its progeny. Under the two-part test, patents are ineligible if they are laws of nature, natural phenomena, or abstract ideas. The Federal Circuit has provided guidance as to the patent eligibility of computer-implemented inventions that also applies to AI inventions.
The Federal Circuit has indicated that claims rooted in computer technology may have a basis for patent eligibility. Further, the court has indicated that claims listing features that improve computer performance may be patent eligible subject matter. However, in August 2022, the Federal Circuit held in Thaler v. Vidal that an inventor under the United States Patent Act must be a human being.
The scope of AI technology that is patent eligible is an evolving area of law. Understanding the contours of subject matter eligibility enables improved filing decisions and drafting with eligibility requirements in mind which can lead to a greater likelihood of success.
Listen as our authoritative panel of patent attorneys examines the most recent USPTO eligibility standard and how it can be addressed as well as how the courts and the PTAB have viewed subject matter eligibility in AI cases. The panel will offer best practices for navigating subject matter eligibility and drafting to satisfy patent eligibility requirements.
- Subject matter eligibility in AI patent applications
- Challenges
- USPTO guidance
- Court and PTAB treatment
- Practical implications and best practices in light of the current guidance and case law
The panel will review these and other relevant issues:
- What are the unique eligibility challenges for AI patent applications?
- How have the courts treated the issue of subject matter eligibility in AI patents?
- What steps should patent counsel take to satisfy patent eligibility requirements?
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