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USPTO Internal Memo Suggests that Patenting AI Inventions May Become Easier

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The USPTO has issued an internal memorandum that may make it easier to patent software, in particular AI-related software...

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The USPTO has issued an internal memorandum that may make it easier to patent software, in particular AI-related software inventions. In recent years, the USPTO has found certain software inventions to be patent-ineligible abstract ideas.  In the new internal memorandum, the USPTO has directed patent examiners to exercise greater care before rejecting AI-related software technologies for this reason.  While the memo is styled as a “reminder” of existing policy and law, its emphases and examples send a clear indication that the Office wants to dial back aggressive eligibility rejections, particularly in AI and machine learning domains.Read the full <a href="https://mofotech.mofo.com/topics/uspto-internal-memo-suggests-that-patenting-ai-inventions-may-become-easier" target="_blank">blog post</a>.

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Josh Crawford's practice focuses on domestic patent prosecution, international patent portfolio management, patent infringement and validity determinations, inter partes review proceedings, and IP litigation support.Josh has experience drafting and prosecuting patents in numerous technology areas, including network security, cloud computing, machine learning, computer vision, medical devices, laboratory and assay equipment, microfluidics devices, bioinformatics, user interfaces, and consumer electronics.In addition to patent prosecution, Josh’s practice includes preparing petitions and responses in inter partes review proceedings, as well as preparing invalidity and non-infringement positions in district court litigations.  In adversarial proceedings, Josh has worked on matters concerning network security systems, GPS technology, medical devices, and integrated circuit technologies.Josh received his J.D. with highest honors from The George Washington University Law School, where he was elected to the Order of the Coif and received the Presidential Merit Scholarship and Bobby Burchfield Scholarship. During law school, he worked at Morrison & Foerster as a summer associate and as a law clerk.Before law school, Josh received his B.S. in physics with high honors from the University of Maryland. During his undergraduate studies, he worked with the Joint Quantum Institute performing optics research, including designing and constructing an optical cavity for use in cavity quantum electrodynamics experiments.Josh is licensed to practice law in the District of Columbia and Virginia and is registered to practice before the USPTO.

Joshua Crawford

Of Counsel

Anna Yuan’s practice focuses on patent prosecution, IP due diligence, post-grant proceedings, and IP litigation support. She has been recognized as one of the “Ones to Watch” in America by Best Lawyer and a Rising Star in Intellectual Property by Americas Women in Business Law. Anna is the co-founder and co-chair of the firm’s Life Sciences + AI patent practice. She leverages her experience in software development and product design gained as a product manager at Microsoft to build valuable patent portfolios covering highly complex technologies to maximize their commercial value. Anna’s practice spans a wide array of technologies, including artificial intelligence, autonomous driving, blockchain, robotics, electronic devices, data analytics, virtual reality, wireless communications, network security, medical devices, diagnostics, health care, and genomics. She has developed and managed clients’ core portfolios in the United States, China, Canada, Europe, Japan, Korea, Mexico, and Australia. Anna’s clients include emerging companies, multinational corporations, and universities.Anna received her J.D. from Harvard Law School. During law school, she served as an executive editor of the Harvard International Law Journal and co-founded the Harvard China Law Association. She was also active in clinical and pro bono programs such as the Cyberlaw Clinic based at the Harvard Berkman Center for Internet and Society, and the Harvard Mediation Program.She received her B.S. summa cum laude in computer engineering from Louisiana State University, with minors in computer science and mathematics. Prior to attending law school, Anna worked as a program manager at Microsoft in the Windows Division. At Microsoft, she led projects relating to software user interface design, software reliability, and software privacy compliance. She has also worked as a facilities engineer at Chevron and as a software developer at Halliburton.She is admitted to practice in California and is registered to practice before the United States Patent and Trademark Office. Anna is a fluent Chinese speaker and regularly counsels Chinese clients in Silicon Valley and abroad.

Anna Yuan

Jon Bockman is the head of the firm’s Technology Patent Practice. In this capacity, he leads the firm’s prominent group of patent practitioners with degrees in electrical engineering, mechanical engineering, computer science, computer engineering, chemical engineering, biomedical engineering and physics. His team handles work in all technology areas including medical devices, AI and machine learning, cybersecurity, computer hardware, advanced materials, and robotics. His practice concentrates on domestic and international patent prosecution, portfolio management, IP due diligence, patent infringement and validity determinations, and IP litigation support. His clients range from some of the largest domestic and international companies to early-stage startups.As lead patent prosecution counsel for several large and emerging companies, Jon has helped clients set up patent departments and committees for building and maintaining strategic patent portfolios. Clients note to IAM Patent 1000 that “[Jon] provides expert legal advice that is clear, understandable and tailored to the needs of the specific client. He is very responsive and is always available when you need him.”Jon has extensive experience helping clients navigate IP concerns including freedom-to-operate and potential litigation issues. Jon is also experienced with leading patent due diligence projects related to investments and mergers and acquisitions. He often leads investor-side and company-side patent due diligence reviews related to these transactions.Jon is a member of the firm’s Inter Partes Review and Post Grant Practice. In this capacity, he handles inter partes review and post-grant review proceedings that were introduced by the Leahy-Smith America Invents Act. He has also handled many disputes for clients in front of the U.S. Patent and Trademark Office (USPTO), including inter partes reexaminations, ex parte reexaminations, and derivation proceedings.Jon is recognized as an IP Star by Managing Intellectual Property and as a leading patent practitioner by IAM Patent 1000. He is also recommended by The Legal 500 US for patent prosecution. While earning his J.D., Jon was the associate editor of the University of Colorado Law Review.