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USPTO vs EPO

US Patent and Trademark Office (USPTO)

U.S. Patent and Trademark Office (USPTO) –

In January 2019, the USPTO issued *revised guidance on patent eligible subject matter.

The revised guidance was generally directed to software applications, but one of the hypothetical examples (EXAMPLE 39) was directed to the Artificial Intelligence(AI) and Machine Learning(ML) .

*See Revised Guidance here and the Accompanying Hypothetical Examples (Examples 39 is directed to AI) here

European Patent Office (EPO)

The EPO provided new guidance on Artificial Intelligence(AI) and Machine Learning(ML) examination in November 2018. This can be found here . It generally describes the need for a technical purpose in the application.

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uspto

U.S. Patent and Trademark Office (USPTO) – HYPOTHETICAL EXAMPLE CLAIM (EXAMPLE 39)

A computer-implemented method of training a neural network for facial detection comprising:                           collecting a set of digital facial images from a database;
             applying one or more transformations to each digital facial image including mirroring, rotating, smoothing, or contrast reduction to create a modified set of digital facial images;
             creating a first training set comprising the collected set of digital facial images, the modified set of digital facial images, and a set of digital non-facial images;
             training the neural network in a first stage using the first training set;
             creating a second training set for a second stage of training comprising the first training set and digital non-facial images that are incorrectly detected as facial images after the first stage of training;
             and training the neural network in a second stage using the second training set.

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uspto

There may be concerns that AI will be difficult or almost impossible to patent but that doesn’t seem to be the case because the USPTO director has stated that :

“As director of the USPTO, one of my top priorities is making sure the United States continues its leadership when it comes to innovation, especially in the emerging technologies of the future, including AI and machine learning. To that end, we must harness our long history of innovation, born of our nation’s founding document and perpetuated by our people’s innovative spirit, and apply the same spirit to AI technologies.”

So it looks like the USPTO is making strides to allow the patenting of AI and ML

However, there are no official guidelines as of yet, except the general revised guidelines about patent eligible subject matter.

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epo

EPO – According to the EPO’s guidance, the invention should have a technical purpose. Subject matter is patent eligible if it is tied to something “technical” or has a “technical purpose.”

EXAMPLE: “the use of a neural network in a heart-monitoring apparatus for the purpose of identifying irregular heartbeats” and the classification of “digital images, videos, audio or speech signals based on low-level features (e.g. edges or pixel attributes for images)” have a technical purpose or application, are patent eligible.

However, “[c]lassifying text documents solely in respect of their textual content” is not patent eligible because it doesn’t have a technical purpose, but rather it has a linguistic purpose.

ANOTHER EXAMPLE: The EPO has indicated that “[c]lassifying abstract data records or even ‘telecommunication network data records’ without any indication of a technical use being made of the resulting classification is also not per se a technical purpose.”

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Summary

— Both

AI and ML claims presented to the USPTO and EPO must be more than just mathematical concepts, and must have some type of “technical purpose” or “practical application.”

Real world examples of how the invention is used might help give it a technical purpose.

— USPTO

It should not be abstract

Try to, avoid mathematical equations in the claims, although claim features may still be based on mathematical concepts.

Including equations in the claims are not prohibited but may trigger extra scrutiny from examiners.

  Actual data processing performed by many A.I. systems is not performed by predefined computer algorithms and extends well beyond mental processes and abstract ideas. So are AI inventions patentable? The answer is YES as long as other statutory requirements (e.g., novelty and non-obvious) are also satisfied.

— EPO

Though not prohibited, try to avoid terms such as such as “neural network” in the claims.  The invention should have a technical purpose.

EXTRAS

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Who is THE inventor?

Since an AI system can create a new innovation on its own, without a human inventor, even if it may require significant data input and instructions, who is the INVENTOR?

This has not determined officially yet. It might ultimately depend on how the Claims are worded.

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USPTO SEEKING INPUT

In addition to hosting a conference on AI earlier this year, the PTO recently announced that it is exploring its approach to AI and is seeking public input on a variety of AI-related issues. The deadline for comments ended recently. Apart from EXAMPLE 39 in the revised guidance of January 2019, there haven’t been any other official guidelines from the USPTO about AI, but they are expected to come soon. So we might have to wait for a bit to get more definitive instructions.

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Let’s go into some detail in how the prosecution process works:

REJECTIONS VS. OBJECTIONS

In Office Actions, there are two seemingly similar terms used by patent examiners when they are refusing to allow patent claims. Claims can either be “rejected” or they can be “objected” to, and in some cases a claim can both be rejected and objected to for the same reason.

Definitions – A refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.”

The term “Rejection ” is used by the patent examiner when the substance of the patent claims being sought is deemed to be unallowable under US Laws 35 U.S.C. . 101, 102, 103 and/or 112.

If the form of the claim (as distinguished from its substance) is improper, an “objection” is made.

A difference between between a rejection and an objection is that a rejection involves the merits of the claim and is subject to review by the Patent Trial and Appeal Board (PTAB), while, an objection involves the form of the claims and if persisted, may be reviewed only petition to the Director of the USPTO.

To say it another way, rejections relate to the law (i.e., Title 35 of the U.S. Code) and objections relate to the rules (i.e., Title 37 of the Code of Federal Regulations). There is overlap between the law and the rules so sometimes you will see an objection and a rejection for the same reason.

REJECTIONS VS. OBJECTIONS Cont’d

The first time the applicant will substantively hear from the Patent Office will be when a First Office Action on the Merits (FOAM) is received.

Most likely all claims will be disallowed. Refusing to allow all the claims does not mean the patent examiner has rejected the invention.

The term Rejection and Objection may be used but it is not the invention that is being rejected or objected. Rather, it is the claims that are being rejected or objected to.

An objection or a rejection will need to be fixed in order to get a notice of allowance from the patent examiner, which cannot happen until only allowed claims are present in the application.

REASONS FOR NON ALLOWANCE

Lets look at some of the reasons why claims will not be allowed in an office action

1)Restriction – A restriction is not really a rejection but any inventor is entitled to one patent per invention. When there are two or more inventions in one application, the examiner will restrict it. This means that we have to proceed with one of the inventions and we can file divisionals for the other inventions.

2)Non-patentable subject matter – An inventor can get a patent for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. You can’t get a patent for subject matter that the USPTO considers as being directed to non patentable subject matter. These are laws of nature, physical phenomena, abstract ideas. So, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity.

3)Existing patent or invention – An inventor can get a patent for something that’s new. If there is an existing application or the idea has been patented, or it’s appeared in a prior publication at anytime, this can invalidate  some or everything that is being claimed. What you typically see is that USPTO may say some or all claims are “anticipated under Section 102” and then cite existing patents. Section 102 rejections are sometimes difficult to overcome but as long as the prior art doesn’t teach each and every single limitation in a claim, it can be overcome by merely pointing out what it is that it doesn’t teach.

4)Obviousness – An inventor can get a patent if the patent is not trivial. As in if it is non obvious over any prior art. Most rejections fall under this class. What the rejection means is that the examiner is saying that it would have been obvious to develop your invention or product if you had known about the references cited because you could have tweaked the references in order to obtain yours.

Rejections in this class can mostly be argued with the examiner. For example you can make a Lack of motivation to combine prior art argumment. For example, if a prior art fails to disclose the relative success of combining  elements to arrive at the invention, you can argue that there wasn’t any reason a person of ordinary skill in the related art would conclude that the elements should be combined to obtain the invention.

5)Inadequate disclosure or improper claims language – The Examiner expects the specification to contain a written description of the invention, and of the manner and process of making and using it, in a full, clear, concise, and exact terms as to enable any person skilled in the art to make the invention.  If the specification doesn’t provide this disclosure, then a rejection will be received.

Improper claim language is a common rejection and the USPTO is very picky about it. You get this rejection when you use incorrect grammar and they are easy to fix.   specifically, antecedent-based language. For example, in a patent application for a dental dispenser if we say in the claims that the dispenser is “a device, having two plungers, with said valve being disposed in front of the plungers.” but never mentioned valve before that clause, you can’t write “said valve” in the first reference. Technical problems under this category are relatively easy to correct in the reply.

REQUIREMENTS FOR PATENTABILITY

Many People normally wrongly assume that if a patent falls under an eligible subject matter (1), then a patent should be obtained. However that is not correct. The subject should be :

1.Patent Eligible

2.Useful (Utility)

3.New (Novelty)

4.Non-Obvious and

5.Described such that people skilled in the technology field can understand, make and use the invention without too much experimentation.

And these are set forth in Statutes (Law) describing the requirements for Patentability.  Contact Unitech Labs to discuss your invention and get opinions about the patentability of your invention.

WHAT IS A PATENT?

A patent is a grant by a sovereign state that provides the recipient with certain legal rights.

In the US, it gives the rights to exclude others from practicing an invention.

So a patent doesn’t necessarily give you the right to practice your invention. It rather gives you the right to prevent others from practicing your invention.  So for example, if you have a patent on a “vessel to hold coffee” and I have a patent on a “handle for a vessel”, then I can prevent you from putting a handle on a coffee cup and you can prevent me from attaching a cup to my handle.

In the US, a  patent can be granted to anyone who invents a useful and non-obvious process, machine, article of manufacture, or composition of matter.

Now that we know what a patent is, what is the patent prosecution process like?

After a non-provisional patent application is filed, or the patent application enters the U.S. national stage from an international patent application, the first time we will substantively hear from the Patent Office will be when a First Office Action on the Merits (FOAM) is received.

When we receive the office action, we usually have 3 months from the mail date to respond or in the case of a restriction requirement, we have two months to respond.

After replying to the first office action, if the rejection holds, the Examiner lets you know why in a second office action.

This action will likely be a “final office action”. The second office action cannot be made final unless it was necessitated by the applicant’s amended claims or information submitted in an Information Disclosure Statement which is a statement that shows relevant prior art or information for the USPTO.

After the final office action, we have a shot at responding to the Examiner in a way that will put the Application in condition for allowance.

If the amendment requires extra search from the Examiner, it will not be entered so we usually file this along with an RCE. The RCE lets us start the review process again by giving us another shot at presenting our arguments starting from a non – final office action.

Otherwise the other options include appealing at the PTAB(Patent Trial and Appeal Board), CAFC(Court of Appeals for the Federal Circuit) and US. Supreme Court. These are not common.

The PTAB apart from hearing appeals from unfavorable Examiner decisions in patent prosecutions also conducts trials, including inter partes review, post-grant, covered business method patent reviews, derivation proceedings, reexamination proceedings, and interferences decisions but that is beyond the scope of this presentation.

The CAFC hears certain appeals from all of the United States District Courts, and appeals from certain administrative agencies, as well as appeals arising under certain statutes. This is also beyond the scope of this presentation.

For the PTAB, a notice of appeal is filed and the board assigns 3 examiners to review the case. If they rule in the applicant’s favor, the claims will be allowed.

If the board does not rule in our favor, the next option is to appeal to the CAFC. If they rule in our favor, against the Examiner and the PTAB, the claims will be allowed.

If they don’t rule in our favor, the U.S Supreme Court is your last option but this is not very common.