December 1, 2022

Volume XII, Number 335

Advertisement

December 01, 2022

Subscribe to Latest Legal News and Analysis

November 30, 2022

Subscribe to Latest Legal News and Analysis

November 29, 2022

Subscribe to Latest Legal News and Analysis

Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part One of Three

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. During this meeting, panelists from industry and the USPTO provided helpful tips on drafting and prosecuting patent applications that include AI components, including special tips for the biotech industry. Key takeaways from the meeting and published materials will be summarized in our Three-Part Blog Series.

Part One – Helpful Tips for Prosecuting Patents in the Biotechnology Space

Major innovations created in the biotechnology space may encounter issues in identifying patent eligible subject matter during patent prosecution (for example, panelists explained that abstract idea and natural phenomenon-based rejections are relatively common in the art unit for Biotechnology and Organic fields). In one key takeaway, the panel suggested drafting an application with specific details about the innovation in order to support patent eligibility and enablement for the innovative concept.

Other helpful tips from the panel discussion included:

  • Focusing on computer architecture or computer-implemented methods, and using defined terms that can be understood and deciphered by the application reader.

  • Telling a detailed story explaining the novelty of the invention instead of merely providing a high level description.

  • Conducting an examiner interview to help teach the examiner the novelty of the innovation using terms and definitions that are unique to the technology field.

Moderator Charles Boudreau (a Lead Administrative Patent Judge at the USPTO) also walked the panelists through the use of common terms to help improve the examiner’s search for prior art and potentially help PTAB or District Court judges improve their understanding of the technology.

Copyright © 2022, Sheppard Mullin Richter & Hampton LLP.National Law Review, Volume XII, Number 272
Advertisement
Advertisement
Advertisement

About this Author

Melissa E. Patterson Associate Patent Prosecution and Counseling
Associate

Melissa Patterson is an associate in the Intellectual Property Practice Group in the firm's San Diego (Del Mar) office.

Melissa focuses her practice on the preparation and prosecution of patent applications, particularly in the areas of software, computer hardware, mobile communications, AI, robotics and financial networks. She has prosecuted more than 500 U.S. and foreign patent matters. Melissa has also assisted with over 100 trademark matters, conducted non-infringement and invalidity analyses for numerous IP litigation matters and assisted with patent licensing matters.

858-720-7460
Theo Mayer Associate Sheppard, Mullin, Richter & Hampton LLP
Associate

Theo Mayer is an associate in the Intellectual Property Practice Group in the firm's San Diego (Del Mar) office.

Areas of Practice

Theo’s practice focuses on patent prosecution and counseling. Theo regularly drafts and prosecutes patents in the automotive and wireless communication sectors.

Additionally, Theo frequently conducts IP due diligence investigations involving companies in various technology sectors such as software development and bioscience.

858-876-3518
Jesse Salen, Intellectual Property Legal Specialist, Sheppard Mullin
Associate

Jesse Salen is an associate in the Intellectual Property Practice Group in the firm's Del Mar office. 

Areas of Practice

Mr. Salen is an intellectual property attorney and focuses his practice on both intellectual property litigation and patent prosecution in the areas of healthcare information technology, medical software, medical devices, optics, nanotechnology, computer devices, and data storage.

Mr. Salen brings with him 16 years of non-legal business and technology experience in both the healthcare and data storage industries. He was Chief...

858.720.8964
Advertisement
Advertisement
Advertisement