Guest Lecture on "AI Patent Quality: Avoiding Flaws Inherent In Human-Performed Work" at Stanford Law

I would like to thank Jason Du Mont and his students for inviting me to speak today at Stanford Law on "AI Patent Quality: Avoiding Flaws Inherent In Human-Performed Work," as part of the Law, Science, and Technology LLM Colloquium. I was impressed by their thoughtful and challenging questions.

To summarize the presentation, most of what patent attorneys do today can be done better by machines using existing technology as applied to patent law. Because AI can optimize strategies based on tens of thousands of data points simultaneously, I believe AI will make better decisions, on average, than the human patent attorney counterparts. The underlying algorithms and technology might be ready to take us there, but the patent-specific tools are not yet fully developed. In the meantime, we can make use of as much data and stats-based analytics as possible. Based on wisdom gained from studies outside of patent law, I think we should defer decisions to AI or stats-based analytics when…

Best Practices on IP Portfolio Management and Bulk Patent Quality Evaluation (as presented at PATINEX in Korea and IP Business Journal Conference in Japan, Sept. 2018)

I am honored to be a guest at PATINEX in Korea and IP Business Journal Conference in Japan this week, where I am presenting the slides below entitled, "Best Practices on IP Portfolio Management and Bulk Patent Quality Evaluation." I wanted to provide an introduction to data-driven patent prosecution in the software realm, particularly for companies that do not yet understand the variance between art units and examiners at the U.S. Patent and Trademark Office (USPTO).
To introduce the topic, I defined a set of "software patent applications," and analyzed what happened to those applications as they transitioned through the USPTO. Not surprisingly in light of my prior studies, the allowance rates are high for software patent applications filed in 2015 with priority in 2015. There are, of course, limitations in this dataset. That said, the data is in line with the all-time high 76% allowance rate at the USPTO. 
Also not surprisingly, the odds in some art units are sig…

Patent Quality Markers From IPRs, District Courts, and Examination at the Patent Office

There are about 600,000 utility patent applications filed in the U.S. each year, feeding into over 8,000 patent examiners at the U.S. Patent and Trademark Office. Each of these patent applications reaches an end-of-life, by being granted, by being abandoned, or by having the patent term expire before grant, which is equivalent to abandonment but much more expensive. Typically, these final dispositions are reached by the patent owners and patent examiners without the involvement of third parties. With all of this data, there are a lot of significant lessons that can be learned by looking at statistics from patent examination. In fact, as indicated in my prior posts and presentations, I think these lessons learned can help us decide where to focus our claims, what to add to our specifications, and even in what spaces we should be inventing more often.

In contrast, there are about 4,000 patent cases filed in district courts each year, with about 10-14% reaching a decision on the merits (…

Are Applicants ALWAYS Able To Survive Art Unit 2138?

Art Unit 2138 has issued patent applications for "Computer Architecture, Software, and Information Security: Memory Access and Control" at a clip of 87.5% (1626 out of 1859 cases) post-Alice.

That said, are applicants ALWAYS able to survive AU 2138? Not quite. 4.4% (82 out of 1859) of AU 2138 cases finally disposed post-Alice had at least one Request for Continued Examination (RCE) but were still abandoned. Yes, that means 95.6% of cases in AU 2138 were either issued, or the applicant gave up in the first round of prosecution.

Taking a slightly different approach in comparison to my previous post on how to successfully navigate AU 3689, I hope to explain or at least hypothesize in this post how the remaining 4.4% of applications became abandoned in AU 2138 post-Alice. Where did it go wrong? Here are some data-driven tips to avoid the identified pitfalls.

1. Be Willing To Continue Examination In AU 2138

As suggested, 95.6% of cases in AU 2138 were either issued, or the applica…

Navigating Art Unit 3689, If You Must

Despite your best efforts, suppose your U.S. patent application was assigned to Art Unit 3689, the art unit for "data processing: financial, business practice, management, or cost/price determination" with an allowance rate post-Alice of (1502 abandoned, 95 granted) 5.9%. For what it's worth, most other art units have much higher allowance rates, such as Art Unit 2827 for "static information storage and retrieval" with an allowance rate post-Alice of 93%. That said, if you got routed to AU 3689, now what?

One suggestion I've heard frequently is to abandon hope all ye who enter here, but I suggest a slightly more nuanced approach.

1. Who's had some success in AU 3689?

First, it's best to work with attorneys who are experienced with Alice issues. (Note: I do not work at a law firm, and this is not a sales pitch.) They should know best when to recommend abandonment or pursuit of the target subject matter, and they should also know best how to pursue the t…