In a current resolution with necessary implications for synthetic intelligence (AI) pushed innovation, the Patent Trial and Attraction Board (PTAB) denied a patent for an AI-based medical instrument.[1] The refusal was not as a result of the invention was not new or creative. Reasonably, the refusal was as a result of the invention didn’t meet a basic rule of U.S. patent legislation. In Ex parte Michalek, the PTAB particularly acknowledged that the patent claims at difficulty recited new details about the nexus between sure biomarkers and the event of lung most cancers as facilitated by machine studying. Actually, previous to enchantment, the applicant had efficiently refuted all arguments raised by the patent examiner that the invention was not new or nonobvious. That mentioned, primarily based on U.S. Patent Workplace steering and a associated instance from that steering, the PTAB nonetheless decided the claims had been flawed primarily based on the authorized precept of subject material eligibility. Though the details on this resolution concern medical well being innovation, the choice is useful to tell patent technique for AI-enabled innovations throughout varied disciplines and industries.
In its patent utility, the applicant submitted patent claims overlaying a machine studying enabled functionality to foretell a illness state of a human primarily based on sure biomarkers. Throughout prosecution, the applicant had overcome all prior artwork rejections. Thus, the problem of novelty and nonobviousness of the claims had been particularly raised, thought-about, and resolved within the applicant’s favor. Patentability rested on the one remaining difficulty of subject material eligibility.
Material eligibility refers as to whether an invention is of the required kind to qualify for patent safety beneath U.S. patent legislation. Processes, machines, manufactures, and compositions of matter are patentable however pure legal guidelines, mathematical ideas, and summary concepts, for instance, should not. In follow, distinguishing between the 2 classes has confirmed troublesome. Due to this issue and the distinctive complexities posed by AI pushed innovation, the U.S. Patent Workplace has issued particular steering on subject material eligibility of AI-related innovations. The steering units forth ideas that inform how patent examiners ought to assess whether or not AI-driven improvements meet subject material eligibility necessities. As an instance these ideas, the USPTO has supplied varied particular “examples” demonstrating when AI-related innovations are patent-eligible and when they aren’t.
Though it acknowledged that the invention concerned a brand new concept, the PTAB in Michalek discovered that the invention was a pure legislation and a mathematical idea. The PTAB relied on an instance from Patent Workplace steering that characterizes an invention referring to willpower of affected person danger for a medical situation as ineligible as a result of it concerned an enchancment to an summary concept, to not the functioning of a pc or different know-how. In line with the cited instance, the recital of a remedy for the medical situation in principle might have helped the applicant to display the subject material eligibility of the invention. Nonetheless, the PTAB didn’t talk about this selection and, in any occasion, no proof indicated {that a} remedy had been described within the patent utility. As maybe extra related, the PTAB didn’t talk about different examples from Patent Workplace steering which may have higher utilized to save lots of the invention.
Whereas this case concerned medical well being know-how, the implicated points inform patent methods for AI-enabled innovations throughout all industries. Patent candidates working with AI must be ready for the Patent Workplace to use related reasoning to their purposes. Patent candidates must be ready to deal with strained reliance on sure examples from Patent Workplace steering or, higher but, spotlight extra analogous examples. It’s essential for patent candidates on the preparation stage to proactively devise an utility drafting technique supported by the steering and examples to ask smoother prosecution.
FOOTNOTES
[1] Ex parte Michalek, Attraction No. 2023-004204 (PTAB Dec. 27, 2024).