Lu Yin Authors IPWatchdog Article About Protecting Patent Claims for AI Technologies
Lu Yin, a Quarles & Brady partner in the Intellectual Property Practice Group, wrote an article for IPWatchdog about the steps that should be taken to avoid potential challenges when seeking patents for artificial intelligence (AI) technologies.
Yin explained that the U.S. Patent and Trademark Office (USPTO) has “underscored the importance of connecting functional claim language to specific structures, especially in computer-implemented inventions.” Under 35 U.S.C. § 112(f), examiners use a three-prong test to determine if AI inventions pass muster.
After summarizing recent applicable cases, Yin shared some best practices to consider. An excerpt:
Using these cases as a guide, patent practitioners should consider the following best practices when drafting AI claims that might trigger § 112(f) analysis:
- Provide detailed structural support: Functional claims should be backed by sufficient structure in the specification. Avoid black-box descriptions, and instead describe the specific components or algorithms that perform the claimed function. Failing to disclose such details, as seen in Ex Parte Joon Woo Son, can result in indefiniteness.
- Avoid overly broad functional language: Using broad functional language without clear structural support is a common pitfall. In Ex Parte Jing Lan, the term “processing resource” avoided § 112(f) because it was tied to electronic circuitry. Make sure functional terms are anchored to specific structures.
- Use recognized structural terms: Use terms that are recognized in the relevant field as structural, such as “controller” or “processing unit.” Terms commonly understood by skilled artisans as referring to known structures, as demonstrated in Ex Parte Jing Lan and Crusoe Energy Systems, are less likely to invoke § 112(f).
- Be clear on claim scope: Ambiguity in functional terms can lead to disputes over claim scope. Provide clear guidance on the meaning of functional terms in the specification, as seen in Crusoe Energy Systems where the specification’s detailed description helped avoid an indefiniteness finding.
- Tailor functional claims to the specification: Ensure that the structure performing the function is clearly identified and described in detail in the specification. This can help avoid rejections under § 112(f) or § 112(b) for indefiniteness.