If you could make one change to the US landscape for patent eligibility, what would it be and do you think it is likely to happen?
The United States must make a path for patent eligibility of computer and software inventions to protect AI and machine learning innovations. One way to accomplish this is to articulate a standard for patenting such inventions that distinguishes them from the prior art. Perhaps something like the “technical effect” employed by our European colleagues could be adopted to better describe the technical improvements that the system or software provides and to distinguish the claimed invention from known, generic computing systems. A similar standard could also be developed for the biological sciences that distinguishes a process or a composition from natural ones.
The USPTO has its own process for considering patent eligibility and now courts need a workable standard that can be applied to give greater predictability of patent eligibility determinations. The office and Congress must work together to articulate a consistent standard. However, passage seems unlikely in the current environment without broad industry support.
Kathi Vidal was appointed head of USPTO earlier this year – what differences, if any, have you observed so far?
Director Vidal has taken on thorny challenges at the PTAB with determination and has wasted no time in setting new policy and communicating these changes to the patent community. Several new director decisions have been issued and many more are on the way.
You are a member of a number of associations, including the American Intellectual Property Law Association and the American Bar Association. How has membership of these helped your professional development?
Associations are becoming increasingly significant in the wake of the pandemic’s separation of people and institutions. They are a vehicle for communication and education despite the challenges faced during the past 18 months.
How are client demands driving use of more sophisticated analytics and AI?
Information growth is not linear – it is exponential and the patent system is not immune from this explosion of information. There are new tools for plumbing the depth of this ocean of data to find stores of prior art for patent drafting and patent defence, and to document patent infringement. Client information is also growing exponentially, and there are also new tools for managing that information and client patent portfolios. The scope and extent of the larger portfolios is so great that companies must consider their data storage and analysis options so as not to duplicate their invention filings. No one quick AI or analytics fix can meet these challenges. Systems must be tailored to address the nuances of different technologies and businesses. In-house solutions are being deployed by larger companies, but mid-size companies can take advantage of software tools available today, even if these are less customised to their particular industry. With the current labour shortages and interest in remote work options, these tools are becoming even more valuable than the brute force, labour-intensive method of managing portfolios.
What key skills do you need to succeed in a post-grant proceeding?
First, focus. Post-grant proceedings are similar to summary judgment proceedings in litigation. One must provide the strongest case up front and be detail-oriented to find the best prior art for the petition. Strong prior art makes for better arguments and reduces the number of references that the PTAB must consider and issues that it must sift through. Many petitioners struggle to extract that last bit of helpful prior art that makes for a stronger set of grounds for invalidity. Later-filed petitions will more likely be viewed with an even more critical eye by the board. As is the case in litigation, that which is not successfully challenged only gets stronger.
The next skill is experience. There are several different ways to attack and to defend patents, and experience is the best teacher. A thorough understanding of patent prosecution, claim analysis and patent law challenges is required. Experienced practitioners also understand the importance of keeping current on changes in the law and recent board decisions.
Finally, communication. There are many technical and legal details in an inter partes proceeding. Practitioners must know how to communicate the relevant details of their case to ensure that it is properly understood. They also need to know how to make sufficient proof of record in case the matter is appealed.
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Timothy Bianchi is a principal of Schwegman Lundberg & Woessner and has been with the firm since its inception in 1993. Active in patent procurement, post-grant challenges, opinions, due diligence and acquisitions, Mr Bianchi represents clients in post-grant proceedings such as inter partes reviews and post-grant reviews. His background comprises electrical engineering and physics, and he has patented in the areas of medical devices, signal processing, communication electronics, computer hardware and software, and semiconductor inventions.