Patents on AI-Assisted Inventions and New USPTO Guidance: Patentability, Inventorship, Significant Contribution
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will cover the patenting of AI-assisted inventions. The panel will examine the recently issued United States Patent and Trademark Office (USPTO) Guidance and what is expected for an AI-assisted invention to be patent eligible. The panel will discuss the inventorship analysis and what it may mean to meet the significant contribution requirement. The panel will offer best practices for handling AI-assisted inventions.
Outline
- Patentability of AI-assisted inventions
- Naming inventors
- Significant contribution
- Duties owed to the USPTO
- Duty of disclosure
- Duty of reasonable inquiry
- Priority claims to prior-filed applications
- Examples
- Best practices
Benefits
The panel will review these and other key issues:
- What does the new Guidance mean for patent counsel seeking protection of inventions that use AI in their innovation?
- What assistance does the new Guidance provide for determining significant contribution?
- What strategies should counsel employ when evaluating significant contribution?
Faculty
Heather Morehouse Ettinger, Ph.D.
Partner
Troutman Pepper Hamilton Sanders
Ms. Ettinger counsels life sciences clients on a variety of intellectual property matters. She excels at due diligence... | Read More
Ms. Ettinger counsels life sciences clients on a variety of intellectual property matters. She excels at due diligence studies, loss of exclusivity analyses, and agreement drafting in connection with buy- and sell-side transactions and collaborations for her clients, which range from preclinical biotechnology companies to large clinical pharmaceutical companies. Ms. Ettinger regularly advises on Hatch-Waxman issues, biosimilars strategy, and litigation and post-grant proceedings, such as inter partes reviews. She also manages the worldwide prosecution of numerous life sciences patent portfolios. Ms. Ettinger has extensive experience counseling clients in IP matters in areas including gene editing, immunotherapies, regenerative medicine, rare diseases, pharmaceutical formulations, genetically modified plants and seeds, enzyme and other large-molecule technology, and small-molecule chemistry. She routinely works with the firm’s corporate team to counsel international corporations in preparing their intellectual property portfolios for U.S. cross-border securities transactions.
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Zachary S. Pratt
Shareholder
Fredrikson & Byron
Mr. Pratt primarily focuses on the prosecution and litigation of software, mechanical and medical device patents in... | Read More
Mr. Pratt primarily focuses on the prosecution and litigation of software, mechanical and medical device patents in addition to trademark registration. He assists technology-driven clients with developing effective strategies to maximize the protection that intellectual property can provide to companies both large and small. Mr. Pratt also provides counsel for companies looking to broaden their IP portfolio to cover both where the client currently is and where the client is looking to go in the future. He has drafted and prosecuted patent applications in a variety of software-focused technology areas, including AI, machine learning algorithms, user interfaces, video coding, VR systems, networks, blockchain and various other applied algorithms dealing with areas including weather detection, medical devices, personal identification, market forecasting, automobile navigation and bug detection. Mr. Pratt also provides assistance with infringement analysis for litigation and due diligence in connection with MA&s.
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Steven L. Wood
Counsel
Hunton Andrews Kurth
With an IP practice encompassing mechanical devices, remote monitoring and control systems, telecommunications systems,... | Read More
With an IP practice encompassing mechanical devices, remote monitoring and control systems, telecommunications systems, e-commerce services and financial services, Mr. Wood advises clients on complex issues of claim construction, infringement, and validity in both patent litigation and post-grant review proceedings. He also provides advice to clients on patent portfolio management and strategy. Mr. Wood’s clients come from a broad array of technology sectors and include medical device manufacturers, consumer goods retailers, financial institutions, computer and software technology companies, and e-commerce technology providers. He has significant patent litigation experience in the Eastern District of Texas, the District of Delaware, the Eastern District of Virginia, and before the International Trade Commission. He has also participated in several Federal Circuit appeals. Additionally, Mr. Wood has significant patent prosecution and post-grant proceeding experience with the USPTO.
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