My Reflections On Examining And Prosecuting Patents In AI For The Last 40 Years

• Published date: 12 October 2021
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Author: Mr Robert W. Downs

My career includes work in research in artificial intelligence, patent examination at the U.S. Patent and Trademark Office, and patent application preparation and prosecution, all over a period of about 40 years. Over that period, I have completed three Masters Degree programs in computer-related fields. As a researcher, I have experienced the difficult challenge of not just writing computer programs in programming languages such as Fortran and Lisp, but getting the programs to work and actually produce desired results. As a patent examiner, I have experienced the difficult challenge of searching for prior art based on a high level description of an invention, as well as judging whether a computer-related invention is patentable under Section 101. As a patent agent, I have experienced a difficult challenge of preparing patent application for computer-related inventions, while keeping in mind a broad range of potential prior art and the high possibility of receiving a rejection under Section 101.

Each experience brings a different perspective on the issue of patentability of computer-related inventions. As a researcher, the importance of publication and documentation was stressed, but copyright and patenting was necessary for protection from a legal standpoint. The question of patenting is especially of importance in group projects and/or corporate projects, where it is important to define ownership. Ownership can even be of concern for individuals in cases where they use software developed by others. However, at the same time, computer programming typically involves principles of software reuse and abstraction away from details. Accepting the fact that much software programming is performed at a high level often using known libraries, a final product may require protection as an incentive for the extensive programming effort. As a concrete example, there is a need for protection from one or more programmers taking all or substantial portions of program code and claiming the final product as their own. As a patent examiner, I was faced with deciding whether the patent application described an invention that one of ordinary skill could make and use without undue experimentation, or whether the description is a broad concept, an abstract idea. My perspective as a patent examiner was based on my own personal experience as a researcher in the computer art. As a patent agent, I am now faced with preparing patent applications for computer-related inventions, where in some cases the invention is so complex that a detailed description that contains too much information only muddies the water as to what the inventive concept might be. In most cases, the invention is multidisciplinary. The inventor(s) may be experts in a domain, but not themselves computer programmers. The computer programmers that write the computer programs serve mainly to make the invention that the inventor has developed. The computer programmers may use existing libraries to save time and cost of programming.

The challenges in performing patent examining and patent preparation are highlighted by the unfriendly nature of patent laws as they relate to computer-related inventions. Prior to the 1952 patent act, categories of invention go back to the time of Thomas Jefferson. I would say that Thomas Jefferson did not consider computer-related inventions as a category of invention. The 1952 Patent Act did not substantially deviate from the original subject matter categories, as it specified categories of "process, machine, manufacture, or composition of matter." The Patent Act of 1790 defined patentable subject matter as "any useful art, manufacture, engine, machine, or device."

While working in research at the Department of the Navy, we were told by a patent attorney at the Naval Research Lab that we could not obtain a patent on an expert system shell for fault diagnosis because it was...