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Capture Innovation
Leading Intellectual Property Strategies for Digital Innovation and Machine Learning
Anil BholeBASc (Comp Eng), LLBLawyer, Patent Agent and Trademark Agent
Capture Innovation
Bhole IP Law is a registered business name of Anil Bhole Professional Corporation.
The information provided herein is a general background of intellectual property law concepts generally applicable in Canada. Bhole IP Law and its lawyers make NO EXPRESS OR IMPLIED REPRESENTATIONS ORWARRANTIES in respect of the information, including but not limited to the accuracy of the information, provided herein.
The information provided herein does not constitute legal advice, and should not be relied upon as legal advice. NO LAWYER-CLIENT OR AGENT-PRINCIPAL RELATIONSHIP IS ESTABLISHED BETWEEN THE READER AND BHOLE IP LAW OR MARC LAMPERT. Please contact us if you wish to obtain legal advice for your specific situation, following which we will determine whether we can act for you.
Capture Innovation
• Patentability of computer-implemented inventions
• Patent application and prosecution stats
• Guidelines for the road ahead
Road Map
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Software Patentability
• Hit hard in recent years by Alice (US), Amazon (Canada)
• Trending towards European standard of a technical problem to a technical solution
• Cases bear out that software solving computer problems tend to be found patentable subject matter
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Artificial Intelligence
Three general buckets of neural network/AI inventions
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Refresher - Alice
1) Are the claims at issue directed to a patent-ineligible concept? (e.g., abstract idea)
2) Examine the elements of the claims to determine whether they contain additional elements sufficient to “transform” the claimed abstract idea into a patent-eligible invention
Distinguish patents claiming building blocks of human ingenuity with those that integrate the building blocks into something more
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USPTO Guidance - Unpatentable• Mitigating settlement risk (Alice, 2014) • Method of hedging (Bilski, 2010)• Creating a contractual relationship (buySAFE, 2014)• Using advertising as an exchange or currency (Ultramercial,
2014)• Processing information through a clearinghouse (Dealertrack,
2012)• Comparing new and stored data and using rules to identify
options (SmartGene, 2014)• Using categories to organize, store and transmit information
(Cyberfone, 2014)• Organizing information through mathematical correlations
(Digitech, 2014)• Arrhenius equation for calculating the cure time of rubber
(Diehr, 1981)
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USPTO Guidance - Significantly More
• Improvements to another technology or technical field; or to the functioning of the computer itself
• Effecting a transformation to a different state or thing
• Unconventional steps that confine the claim to a particular useful application
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Canada - CIPO Guidance
• a patentable invention is an inventive solution to a practical problem
• upon construing the claim, the computer must be considered an essential element and not just a convenience
Similar to US approach in practice
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Takeaways for Both Jurisdictions
•Both rely on looking at what technical problem is being solved
•The U.S. approach is also concerned with pre-empting of abstract ideas
–Limit claim to particular application/machine
•Claims should recite as much technical detail as possible
•Implicitly economic practices are on shaky ground (public policy)
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AI Specific Takeaways
Patent portfolio manager, focus on techniques that:
• produce a better functioning neural network
• transform underlying data (not merely using raw data points)
• do something to the data that a human cannot reasonably do
• claim solutions to specific computer, network or internet problems
Acquirer:
• likely staying away from fundamental research
• deal value where there is data
• Evaluate the target’s steps to protect the data and the gathering/analysis of that data
• How much of the data pipeline is owned
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Artificial IntelligenceProbably Good chance Possibly noPatentable?
Deal partners Low Medium High
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AI Patent Filings
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AI Patent Filings
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Post-Alice Court and PAB Stats
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The Good News?2013 2014 2015 2016 2017 All years
3691 483
154
= 76%
260
144
= 64%
63
232
= 21%
92
309
= 23%
88
97
= 48% = 52%
3692 374
129
= 74%
248
135
= 65%
21
253
= 7.7%
21
248
= 7.8%
41
110
= 27% = 41%
3693 364
142
= 72%
172
161
= 52%
18
325
= 5.3%
23
348
= 6.2%
38
171
= 18% = 49%
3694 439
151
= 74%
229
163
= 58%
17
291
= 5.5%
21
289
= 6.8%
36
96
= 27% = 50%
3695 375
154
= 71%
193
197
= 49%
26
321
= 7.5%
47
281
= 14%
26
90
= 22% = 45%
3696 3
0
= 100%
34
13
= 72%
59
153
= 28%
47
185
= 20%
71
47
= 60% = 36%
Total
= 77.8% = 60% = 12.5% = 13% = 33.7% = 45.5%
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2130 Memory Access and Control
2013 2014 2015 2016 2017 All years
Total
N/A
= 90.25%
= 88.88%
= 85.38%
= 86.88%
= 78.50%
2630 Digital and Optical Communications
2013 2014 2015 2016 2017 All years
Total
=
87.67%
= 86.00%
= 87.50%
= 87.33%
= 90.50%
= 86.50%
2180 Computer Architecture
2013 2014 2015 2016 2017 All years
Total
=
81.00%
= 80.40%
= 65.54%
= 85.60%
= 86.40%
= 78.60%
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2110 Computer Architecture
2013 2014 2015 2016 2017 All years
Total
=
89.14%
= 87.29%
= 85.00%
= 84.86%
= 87.71%
= 85.14%
2660 Digital Cameras; Image Analysis; Applications; pattern Recognition; Color and
Compression; Enhancement and Transformation
2013 2014 2015 2016 2017 All years
Total
=
84.00%
= 84.11%
= 83.56%
= 85.78%
= 88.56%
= 86.11%
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Portfolio Management - Triage
• AI patent portfolios not dissimilar from general software patent portfolios
• Is it actually a new machine?
• Is AI the invention or does AI merely enable the product?
• Was the “invention” really just gathering a lot of training data?
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Portfolio Management - Filing
• File plenty of applications for novel architectures
• File plenty of applications for novel training or deployment techniques
• File selectively for novel feature engineering
• Ensure the claims are prepared to avoid tough art units
• Delay delay delay if you end up in tough art unit (or try to get out through continuation)
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Doesthe invention
relate to a neural network
problem?
Is theNN in thesolution
significantly customized?
Is specific hardware essential?
Includes sensors,
scanners, robotic
arms, etc.
File application
Yes Yes Yes
No NoNo
Lower priority
Falls into a business
method or e-commerce art
unit?
No Yes
Is the solution
directed to a
better neural
network?
Isthe solution directed to a
specificapplication?
Yes
No
Did adapting the
NN require
ingenuity?
Look at related
art
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Acquirer
• Likely going to avoid fundamental research
• Avoid too many “architecture” applications
• May place value on data
– Confidentiality and security become crucial
– Ownership of data pipelines becomes crucial
• Look for innovation in the complex feature engineering space
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Artificial IntelligenceProbably Good chance Possibly noPatentable?
Deal partners Low Medium High
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Citations
http://www.bilskiblog.com/blog/2016/01/alicestorm-when-it-rains-it-pours.html
http://www.ipwatchdog.com/2015/12/14/the-most-likely-art-units-for-alice-rejections/id=63829/
http://www.ipwatchdog.com/2015/05/21/hardest-easiest-art-units/id=57864/
http://www.bilskiblog.com/blog/2015/10/update-on-uspto-e-commerce-patent-applications.html
Juristat
http://www.clearviewip.com/ip-artificial-intelligence-market/
https://www.linkedin.com/pulse/artificial-intelligence-ai-patent-landscape-1q-2016-alex-g-/?published=t
http://www.bilskiblog.com/blog/2017/06/alicestorm-april-update-and-the-impact-of-tc-heartland.html
http://www.ipwatchdog.com/2015/12/14/the-most-likely-art-units-for-alice-rejections/id=63829/
