Over the past decade or so, the U.S. patent system has evolved significantly, thanks to a combination of new legislation, USPTO initiatives, court decisions, and various strategies employed by individuals and corporations alike — here are the key highlights.
The patent system is changing, and your patent strategy must adapt. Smart tech companies are increasingly playing offense instead of defense with patents — investing in programs to obtain a portfolio of high-quality patents.
What does that mean in practice? Here’s how you might apply those considerations to key emerging technologies: namely, artificial intelligence, quantum computing, the Internet of Things, and blockchain.
EVALUATING THE RELATIVE QUALITY OF YOUR PATENT APPLICATIONS
We’ve previously discussed what a high-quality patent is, as well as how quality differs from value. In a nutshell, you want to obtain patents that covers meaningful technology, can’t be easily struck down in litigation, and is aligned with your business goals.
The following table summarizes how key changes to the U.S. patent system should impact how you evaluate the quality and value of your company’s patent applications:
|What changed in the patent system?||Lower-quality patent||Higher-quality patent|
|Bilski v. Kappos, Mayo v. Prometheus, and Alice v. CLS Bank expanded the range of inventions considered to be “abstract ideas” or “laws of nature” (Section 101)||Claims inventions that resemble “abstract ideas” (business methods, mathematical formulas, algorithms, pure software processes, data manipulation)||Claims more concrete / tangible inventions, technological improvements, and practical applications|
|KSR v. Teleflex raised the standard for demonstrating “non-obviousness” (Section 103)||Claims inventions without a clear technical distinction or advantage over the prior art||Claims inventions that have significant technical distinctions or advantages over the prior art|
|Inter partes review proceedings expanded||Fewer claims, encompassing only a broad scope||Many claims with diverse language, and many narrow dependent claims|
|Nautilus v. Biosig changed the standard for determining whether an invention is “definite” (Section 112)||Vague claim language that lacks thorough technical description||Clear claim language that uses well-defined terminology to provide context|
|Bell Atlantic Corp. v. Twomblyand Ashcroft v. Iqbal raised the federal pleading standard, making it harder to initiate litigation||Claims require either some “unseen” component or function, or actions by multiple entities||Easy to detect or prove infringement based on public information|
|U.S. patent system generally perceived to be more unpredictable||Lack of foreign protection options||Foreign filings ensure enforceability in case the U.S. patent is challenged, and reinforce validity as multiple patent offices will conduct prior art searches|
ASSESSING PATENT QUALITY IN 4 EMERGING-TECHNOLOGY INDUSTRIES
In this section, we’ll see how the above recommendations might play out with today’s most hyped emerging technologies: artificial intelligence, quantum computing, the Internet of Things, and blockchain.
To that end, we can use the following criteria to discuss whether patent protection will be appropriate for a particular innovation in each field of technology:
- Validity: Does the claimed invention meet the legal requirements for a patent?
- Patent-eligible: Is the invention an abstract idea, or a law of nature? (Section 101)
- Defensible: Does the invention meet the non-obviousness requirement? (Section 103)
- Detectability: Can the patent be enforced? How easy is it to prove infringement by a competitor?
ARTIFICIAL INTELLIGENCE (AI)
AI refers to a machine that can imitate human intelligence processes such as learning, reasoning, and self-correction. Typically, these machines apply algorithms to learn from data, solve problems, and offer recommendations as needed.
- Patent-eligible? Yes. Generally AI inventions can be patent-eligible, especially if you claim some concrete application. The AI algorithm itself might be considered an abstract idea, and therefore not patentable (though the law in this area continues to evolve).
- Defensible? Using known AI algorithms to solve known problems is becoming an obvious solution. So ask yourself: What can you do now that you couldn’t do before AI? To obtain a patent, you need to show some system or process that didn’t exist before.
- Detectable? Some AI systems use cloud-deployed processes. In those cases, it would be extremely difficult (if not impossible) to prove with certainty that someone is using the invention.
For AI technologies that may not be top candidates for patenting (like pure algorithms and cloud-based processes), consider trade secret protection instead.
All modern computers use digital electronic memory and binary processor logic. By contrast, a quantum computer stores and processes information in a quantum system; for example, at the atomic and subatomic levels of matter.
- Patent-eligible? Yes. Generally quantum computing inventions are patent-eligible, but you might have to claim specific hardware or modality to satisfy the patent office. For instance, your patent application might be subject to added scrutiny if you claim a pure algorithm that could be performed by any quantum computer.
- Defensible? The field of quantum computing is rapidly maturing, which means that more and more published descriptions of the technology are now available. As a result, the threshold for patentability is probably getting harder over time, as prior art would exist for a growing number of applications of the technology.
- Detectable? As near-term systems are typically deployed via the cloud, it will be fairly difficult for you to detect infringement without physical access to your competitors’ hardware. (That said, you could use public documentation to assert a claim in some cases.) But in the longer term, quantum hardware will be sold as a tangible product, and infringement will be easier to detect.
If your quantum computing technology isn’t a strong candidate for patenting (for example, it’s a pure algorithm), you may want to consider defensive publications to create prior art against your competitors.
INTERNET OF THINGS (IOT)
Broadly, IoT refers to interconnected physical devices that can automatically collect and exchange information over the internet or other data connections (like WiFi). IoT technology spans a diverse class of industries, from transportation to manufacturing to personal home use.
- Patent-eligible? Yes, particularly if you claim specific types of device and systems. It’s much trickier to pursue patent protection for pure software inventions.
- Defensible? Because of the rapid proliferation of IoT technology, your invention will have to go beyond simply making things “smart” (with a processor) or “connected” (via WiFi or Bluetooth) in order to be considered non-obvious.
- Detectable? Avoid claiming cloud-deployed processes. Instead, your claims should cover functionality that can be detected by observing a device that is sold.
If you’ve got your hands on valuable IoT technology, you should consider a mixed IP protection strategy: patent the hardware product, but protect cloud services via trade secrecy. (We’ve put together a blog post about how you can overcome common challenges when patenting IoT technology. Check it out!)
In very simple terms, a blockchain is a digital record of information that’s stored in a decentralized, public database. While the technology was pioneered in 2008, it came into the mainstream only with the launch of Bitcoin.
- Patent-eligible? It will be challenging to obtain a patent for pure business applications (e.g., “smart contracts”, cryptocurrencies, transaction ledger). However, you should be able to patent an improvement to the blockchain technology itself (e.g., crypto algorithms, communication protocols, data manipulation and storage, etc) and other types of technological improvements.
- Defensible? There are probably many useful applications that have not been fully developed yet, and so are unlikely to run into significant prior art obstacles.
- Detectable? While many anonymous entities operate on the public bitcoin blockchain, do keep in mind that commercial deployments (e.g., Walmart) use a closed private system, where it’ll more difficult to detect infringement.
CONSULT A PATENT ATTORNEY FOR LEGAL ADVICE
This post endeavors to offer an overview of how to think about the strength of patent protection for certain types of technology — but is not a substitute for legal advice. To obtain insights tailored to your specific situation, you should always consult a patent attorney.
At Henry Patent Law Firm, we love hearing from tech professionals looking to grow their businesses with sophisticated patent strategies. Contact us now to find out how we can help!
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.