According to intellectual property attorney Chris Rourk, there are distinct challenges facing the burgeoning artificial intelligence industry when it comes to protecting new innovations. In a recent article in Asia IP, he outlined issues that artificial intelligence inventors should consider when deciding how to protect their technology. He also addressed challenges involved in using AI to identify gaps in patent protection.
Weighing the Risks
In the article, Chris advises that though new artificial intelligence (AI) technologies are potentially eligible for patent protection, applicants should be aware of the risks. He explained that the level of disclosure required for these applications could allow competitors to copy. He also notes that because AI technologies are typically implemented via software applications, getting a patent approved can be difficult no matter how much detail the applicant discloses.
“For example, in the US, it is common to receive patentable subject matter rejections from US patent examiners for software-implemented inventions, even when the US patent office guidance for disclosing and claiming such inventions is followed. The US has also made it easier for such patents to be challenged in court and through administrative processes, and such challenges can be expensive to respond to, and have resulted in the loss of patent protection for commercially valuable inventions that provide substantial utility.”
As a result, Chris explains that businesses seeking to protect their AI inventions should be vigilant in deciding whether it makes sense to risk applying for a patent when such inventions can instead be protected as a trade secret.
Assessing AI’s Usefulness for Competitive Research
Chris also told Asia IP that new AI tools have made it easier to research the patent landscape. A company can use these tools to research active patents as well as to identify parties that are infringing on their patents. However, he notes that these tools are limited to the information that is present in patent documents and published applications.
“While these tools and techniques are useful and can help identify gaps in existing patent protection that can be protected by filing continuation or divisional applications, or concepts that are in the public domain and which can be used without infringing patents of other parties, they aren’t of much use for assessing the competitive landscape when innovations are not patented and are protected as trade secrets,” Chris said. “Thus, another industry challenge is to understand how competitors are using AI when they are keeping information about such uses confidential.”
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About Chris Rourk
Chris Rourk is an intellectual property attorney who handles high profile matters for clients in intellectual property, corporate transactions, commercial litigation, and other matters. He has prosecuted over 300 patents to issuance in diverse technological fields such as nanotechnology devices, semiconductor systems and devices, radio frequency systems and devices, analog systems and devices, telecommunications systems and devices, medical devices, image data processing systems and devices, and consumer electronics.
Chris is AV Rated by Martindale-Hubble and was recognized as a Legal Lion by Law360 for his work on Magnum Oil Tools International Ltd., case number 15-1300, in the U.S. Court of Appeals for the Federal Circuit.