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Patent Disclosure for AI Inventions in the U.S. and Europe: Key Considerations, Strategies for Disclosure

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Wednesday, January 24, 2024

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This CLE webinar will guide patent counsel on disclosure issues in the U.S. and Europe when seeking patent protection for AI inventions. The panel will discuss the guidance from the relevant patent offices and will compare the European approach and the U.S. approach. The panel will offer best practices for navigating disclosure requirements when drafting patent applications to pursue in the U.S. and Europe.

Description

When it comes to AI inventions, there is uncertainty as to what comprises sufficient disclosure under Article 83 EPC in Europe and what is needed to meet Section 112 written description requirements in the U.S. As a result, it is important for patent counsel to carefully consider what to disclose and what not to disclose in a patent application when seeking patent protection for AI inventions.

Based on the decisions to date, the USPTO seems to be looking for more specific implementation details than in other computer-related fields. In Europe, AI inventions face stricter written disclosure scrutiny than in the U.S. To meet the tougher scrutiny, patent applications must explain the problem the AI invention solves and how it does so.

Listen as our authoritative panel of patent attorneys examines disclosure requirements in both the U.S. and Europe when seeking patent protection for AI inventions. The panel will discuss the guidance from the relevant patent offices and will compare the European approach and the U.S. approach. The panel will also offer best practices for meeting disclosure requirements for AI patents in the U.S. and Europe.

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Outline

  1. Disclosure requirements
    1. U.S.
    2. Europe
  2. Disclosure risks for AI-related inventions
  3. Guidance from patent offices
    1. USPTO
    2. EPO
    3. Others
  4. Best practices for meeting disclosure requirements

Benefits

The panel will review these and other key issues:

  • What disclosure risks must counsel address when seeking protection for AI-related inventions?
  • What guidance do the patent offices provide related to disclosure with AI inventions?
  • What strategies should counsel employ when determining whether and when to disclose?

Faculty

Distefano, Luigi
Luigi Distefano

Partner
Finnegan, Henderson, Farabow, Garrett & Dunner

Mr. Distefano is a UK and European patent attorney whose practice focuses on patent prosecution, portfolio development...  |  Read More

Horn, Kelly
Kelly S. Horn

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Ms. Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help...  |  Read More

Morozova, Yelena
Yelena Morozova

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Morozova's professional career has spanned across three countries and more than ten years of legal experience...  |  Read More

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