In BioDelivery Sciences International v. Aquestive Therapeutics, Inc., the Federal Circuit recently denied a petition for a rehearing en banc after the Patent Trial and Appeal Board (“PTAB” or “the Board”) interpreted its remand order to “implement the [Supreme] Court’s decision in [SAS Institute v. Iancu]”[1] by modifying its institution decision, denying the inter partes review petitions, and terminating the proceedings.  In doing so, the Federal Circuit effectively agreed with the PTAB that a SAS remand of a partial institution of an IPR does not require the PTAB to subsequently institute on all grounds.

Petitioner BioDelivery challenged 22 claims of Aquestive’s U.S. Patent No. 8,765,167 on several grounds of anticipation and obviousness. In May of 2015, the PTAB instituted IPR on only one of the seven grounds presented by the petitioner. After briefing and argument, the PTAB ruled in its final written decision that all challenged claims were valid. BioDelivery appealed to the Federal Circuit; and during the appeal process, the Supreme Court issued its decision in SAS Institute, ruling that a “petitioner is entitled to a decision on all the claims it has challenged.” 138 S. Ct. 1348 (2018). Thus, the Federal Circuit remanded back to the PTAB, ordering it to comply with SAS. The PTAB responded by denying institution of the IPR petitions entirely, reasoning that reviewing all of the claims and ground would be inefficient and expensive when the overwhelming majority of the grounds raised by the petitioner failed to meet the standard for institution of IPR. BioDelivery Sci. Int’l v. Aquestive Therapeutics, Case No. IPR2015-00165, Paper No. 91 (PTAB Feb. 7, 2019). In doing so, the PTAB rejected arguments from Aquestive that its decision was contrary to the requirements of Section 314 of the Patent Act. Noting that its decision was based solely on the information presented in the petition, it found no conflict with the requirements of § 314(a), and it equally succinctly dismissed § 314(d) non-appealability provision by qualifying the current decision as a reconsideration, not an appeal. The Board cited other cases in which it has changed its determination of institution outside the three-month period set out under § 314(b), and pointed to language in §318(a) as express contemplation that a proceeding can be “dismissed” after institution. Finally, it rejected arguments that reversing its original decision was contrary to guidance, policy, practice, or the Federal Circuit’s remand order. The Board stated that the order simply required the PTAB to make a yes-or-no institution choice regarding the petition.

When Aquestive appealed, a panel of Federal Circuit judges granted a motion to dismiss on the basis that § 314(d) clearly barred judicial review of institution decisions. 935 F.3d 1362, 1366 (Fed. Cir. 2019). Rather than finding that the SAS remand required institution of all the grounds brought forth by the petition, it agreed with the PTAB that the case required either an institution on all grounds, or no institution at all. Id. at 1365 (citing SAS, 138 S. Ct. at 1355). It further agreed that while the Director of the USPTO may be limited in his power to institute review by the institution threshold of § 314(a), he has full discretion to deny review even when that threshold is met. Thus, the court concluded that the PTAB corrected its decision on remand by denying institution, noting that nothing in its remand order divested the PTAB from its discretion.

Aquestive then requested that the panel decision be reheard en banc, which was denied. 946 F.3d 1382 (Fed. Cir. 2020). Judge Newman issued a lone dissenting opinion arguing that the PTAB’s dismissal was a direct disregard of the court’s order; that the Patent Act acknowledges that the Federal Circuit’s orders shall govern further proceedings in the PTAB; and that the PTAB’s action and the court’s ratification runs contrary to constitutional judicial authority, administrative law, and the America Invents Act.  She explained that the remand order did not direct the PTAB to reconsider its institution decision, but to review the additional claims and grounds. She thus concluded that the PTAB failed to comply when it dismissed the IPR. She continued that the PTAB was aware of how to properly proceed following the decision in SAS Institute because it issued guidance on how to do so, and it failed to follow its own guidance. She concluded by summarizing that judicial authority and written law require agencies to follow judicial remands and orders.

Newman’s strongly worded dissent aside, the PTAB’s decision to terminate the IPR proceedings stands. This decision suggests that a SAS remand does not strip the PTAB of its discretion to institute review. A prior PTAB decision instituting review on one ground will not serve as an anchor, forcing the PTAB to institute on all other grounds. When a petitioner presents weak grounds for review, even if some of the grounds meet the reasonable likelihood standard, the PTAB has authority to deny institution on an efficiency basis. Going forward, a petitioner should take care to avoid overreaching on claims and grounds, as it may risk the opportunity to invalidate any claims at all.

[1] BioDelivery Sci. Int’l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205, 1210 (Fed. Cir. 2018).

On December 11, 2019, the Patent Trial and Appeal Board (“PTAB”) designated Ex parte Hannun, 2018-003323 (Apr. 1, 2019) as an informative PTAB decision for applying the United States Patent and Trademark Office’s (“USPTO”) 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”) to determine patent eligibility under 35 U.S.C. § 101.

As laid out in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014), the first step of the two-step test for determining patent eligibility under 35 U.S.C. § 101 is to determine whether claims are directed to a judicial exception, such as an abstract idea. Regarding the “abstract idea” judicial exception, the 2019 PEG identifies the following three concepts as abstract ideas – (1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes.

In Ex parte Hannun, the Examiner determined that the claims of the U.S. patent application at issue were directed to an abstract idea categorized under “mathematical concepts” and/or “certain methods of organizing human activity,” and thus the claims were not patent-eligible under 35 U.S.C. § 101.

Regarding the Examiner’s identification of “mathematical concepts” in the claims, the Examiner noted that the claims were directed to a mathematical formula because the claims recited using predicted character probabilities to decide a transcription of an input audio and the specification of the application at issue disclosed an algorithm for obtaining the predicted character probabilities. The PTAB disagreed and concluded that the claims were not directed to a mathematical formula because the claims do not affirmatively recite any mathematical formula.

Regarding the Examiner’s identification of “certain methods of organizing human activity” in the claims, the Examiner noted that the claims recited three steps, namely (1) normalizing the input audio data, (2) generating spectrogram frames based on each audio file, and (3) using a mathematical formula to convert audio data into text data. The Examiner determined that since humans can listen to an audio file and transcribe the audio data into text data which can all be done mentally, the claims were directed to a method of organizing human activity. The PTAB disagreed and concluded that the claims do not recite organizing human activity, such as fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, or relationships or interactions between people. The PTAB also concluded that the claims do not recite any mental process because the claimed steps cannot be performed mentally.

Hannun provides a guidance as to how the abstract idea categorization disclosed in the 2019 PEG can be applied during examination. With respect to the “mathematical concepts” category, Hannun suggests that claims are not directed to a mathematical concept unless the claims affirmatively recite a mathematical algorithm or formula. With respect to the “mental processes” category, Hannun suggests that the steps recited in claims must be capable of being performed mentally.

The PTAB’s Precedential Opinion Panel (POP) issued its decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) [hereinafter Hulu], which addresses the requirement for a petitioner to establish that an asserted reference qualifies as a printed publication for institution of an inter partes review. The PTAB POP determined that Hulu, as the petitioner, had produced sufficient evidence to establish a reasonable likelihood that the disputed reference, Dougherty, was publicly accessible before the critical date of the challenged patent. The POP cited the facts that Dougherty (1) “bears a copyright date of 1990”, (2) has “a printing date of November 1992”, (3) has an ISBN date of 8/94, and (4) is a textbook from an established publisher, O’Reilly, and is part of a well-known book series. Hulu, at 19.

Continue Reading PTAB Precedential Opinion Panel Evaluates Standard for Showing Public Accessibility of a Reference

The Federal Circuit recently addressed the requirement for establishing “nexus” for secondary indicia. On December 18, 2019, the Court of Appeals for the Federal Circuit (the “Federal Circuit”) vacated and remanded a PTAB decision of non-obvious, and ultimately raised the bar a patentee needs to meet to invoke secondary considerations of non-obviousness. In Fox Factory, Inc. v. SRAM, LLC, No. 18-2024 (Fed. Cir. Dec. 18, 2019), the Federal Circuit vacated an inter partes review (“IPR”) final decision holding the claims of U.S. Patent No. 9,182,027 as non-obvious due in large part to a finding of commercial success attributed to the claimed invention. On appeal, the Federal Circuit concluded that the PTAB improperly applied the presumption of nexus between the evidence of commercial success and the claims of the patent. The court held that the proper presumption of nexus can only be achieved by proving that the product sold by the patentee is “essentially the claimed invention.” Id. at 12.

Continue Reading Federal Circuit Raises the Standard of Nexus Requirement for Secondary Indicia of Non-Obviousness

Following on the heels of the United States Patent and Trademark Office’s request for comments, the World Intellectual Property Organization (WIPO) recently released an issues paper on artificial intelligence (AI) and intellectual property (IP) policy.  Comments may be submitted by February 14, 2020.

Continue Reading World Intellectual Property Organization Weighs in on Artificial Intelligence and Intellectual Property

Recently, the Federal Circuit held that Administrative Patent Judges (“APJs”) comprising the 3-member USPTO Patent Trial and Appeal Board (“PTAB”) are unconstitutionally appointed in violation of the Appointments Clause of the Constitution. The court promptly remedied the violation and limited its effect on other PTAB decisions.

Continue Reading The Federal Circuit’s Determination That Administrative Patent Judges are Unconstitutionally Appointed

On October 4, 2019, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking to revise the rules of prosecution practice pertaining to patent term adjustment (“PTA”) in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019) (“Supernus”). The Federal Circuit held in Supernus that a reduction of PTA under 35 U.S.C. 154(b)(2)(C) must be equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application. This holding means that the regulations pertaining to reduction of period of adjustment under 37 CFR 1.704 need to be revised. Currently 37 CFR 1.704 specifies reduction amounts that correspond to particular actions taken by the applicant. The proposed rule change will modify the following provisions of 37 CFR 1.704 such that they will instead explicitly quantify reduction of PTA as “the period from the beginning to the end of the applicant’s failure to engage in reasonable efforts to conclude prosecution”:

  • deferral of issuance of a patent (37 CFR 1.704(c)(2));
  • abandonment of an application (37 CFR 1.704(c)(3));
  • submission of a preliminary amendment (37 CFR 1.704(c)(6));
  • submission of papers after a decision by the Patent Trial and Appeal Board or by a Federal court (37 CFR 1.704(c)(9)); and
  • submission of papers after a notice of allowance under 35 U.S.C. 151 (37 CFR 1.704(c)(10)).

Written comments must be received on or before December 3, 2019.

Section 154 of Title 35 of the U.S. Code governs the contents and term of patents, as well as provisional rights. The patent term adjustment provisions were added to statutory law in 1999 as a countermeasure against the potential threat of the application process consuming too much of a patent’s lifespan. Under Section 154(b)(1), a number of days could be added to the term of a patent to compensate the applicant for delays that were the fault of the USPTO. Knowing that the applicant may also be at fault for delays in prosecution, Congress added 154(b)(2)(C)(i) to allow the USPTO to reduce those awarded patent term adjustment days “equal to the period of time the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” Congress then designated the Director of the USPTO with authority to prescribe regulations establishing the circumstances that constituted failure to engage in reasonable efforts.

Supernus involved a pharmaceutical company challenging the USPTO’s reduction of six-hundred forty six (646) days against a PTA of 2,321 days corresponding to their patent application. The challenged reduction included a period of five-hundred forty six (546) days beginning when Supernus filed their request for continued examination (“RCE”) and the moment they filed a supplemental information disclosure statement (“IDS”), including a notice of opposition against their related European patent. Supernus conceded that the time between finding out about the opposition and filing the IDS – one hundred days – should be deducted against the PTA, but argued that the remaining five-hundred forty six should not because there was no reasonable action it could have taken during that period. See Supernus, 913 F.3d at 1360.

On its way to holding for the appellants, the Federal Circuit applied the Chevron two-step analysis and concluded that the USPTO’s interpretation of its own authority as arbitrary and capricious. Noting that the statute gave express authority to the USPTO to regulate what circumstances constitute failure to engage in reasonable efforts, the Court concluded that the plain language of the statute prohibited the USPTO from reducing PTA by an amount exceeding the time the applicant failed to engage in reasonable efforts. Id. at 1358-59. In other words, reduction of PTA may not include periods of time where no course of action can be taken by the applicant to help conclude the prosecution of the application. Id.

The USPTO has stated that while prior notice and opportunity for public comment for the proposed rulemaking are not required pursuant to 5 U.S.C. 553(b) or (c) or any other law, the Office has chosen to seek public comment to benefit from the public’s input. As stated above, those seeking to submit comments must do so by December 3, 2019.

On October 1, 2019, in Honeywell Int’l Inc. v. Arkema Inc., Appeals 2018-1151, -1153 (Fed. Cir. Oct. 1, 2019), the Federal Circuit held that the Patent Trial and Appeal Board (“the Board”) abused its discretion by requiring Honeywell Int’l Inc. (“Honeywell”) to show that the requirements of 35 U.S.C. § 255 were met before authorizing Honeywell to file a motion for leave to request a Certificate of Correction from the Director of the U.S. Patent and Trademark Office (“the Director”).

Honeywell owns U.S. Patent No. 9,157,017 (“the ’017 patent”) claiming priority to a list of applications dating back to 2002. Arkema Inc. (“Arkema”) filed two petitions for post-grant review (“PGR”) of the ’017 patent. Arkema argued that the priority applications listed on the ’017 patent did not provide written description support for the issued claims, and thus the claims of the ’017 patent were only entitled to a priority date of March 26, 2014, which rendered the ’017 patent eligible for PGR proceedings.

In the PGR proceedings, Honeywell contended it had inadvertently failed to make amendments to the priority applications listed on the ’017 patent during prosecution and sought authorization from the Board to file a motion for leave to request a Certificate of Correction from the Director. The Board rejected Honeywell’s request for the reason that “at this juncture there has been a failure to show that the requirements of 255 have been met.” After the Board rejected Honeywell’s request, the PGR proceedings continued, and the Board issued a final written decision holding that the challenged claims were unpatentable. Honeywell appealed.

On appeal, the Federal Circuit identified three procedural steps a patent owner subject to a post-issuance review proceeding must take to file a petition for a Certificate of Correction: (1) seek authorization from the Board to file a motion (37 C.F.R. § 42.20(b)); (2) if authorization is granted, file a motion with the Board asking the Board to cede its exclusive jurisdiction (37 C.F.R. § 1.323); and (3) if the motion is granted, petition the Director for a Certificate of Correction under 35 U.S.C. § 255.

The Federal Circuit held that the Board abused its discretion by requiring Honeywell to show that the requirements of § 255 were met when Honeywell was merely requesting authorization to file a motion for leave to petition the Director. The Federal Circuit also held that “the Board further abused its discretion by assuming the authority that § 255 delegates to the Director and deciding the merits of Honeywell’s petition for a Certificate of Correction.”  The Federal Circuit explained, “[§ 255] does not grant the Board with authority to determine whether a mistake in an issued patent is of ‘minor character’ or ‘occurred in good faith.’  That authority is expressly granted to the director.”   Thus, the Federal Circuit vacated the Board’s final written decision and remanded.

On October 22, 2019, the USPTO published a Federal Register notice proposing changes to the rules of practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patents (“CBM”) (collectively “post-grant trial”) proceedings regarding burdens of persuasion for motions to amend and the patentability of substitute claims.[1]

Specifically, the Federal Register notice proposes a petitioner bears the burden to show the unpatentability of substitute claims proposed in a motion to amend; a patent owner bears the burden to show a motion to amend complies with statutory and regulatory requirements; and the Board may, in the interests of justice, make a determination regarding the patentability of substitute claims based on the record in the proceeding regardless of the burdens assigned to any party.[2]

Previously, the Board interpreted 35 U.S.C. 316(d)(1), 326(d)(1), and 37 CFR § 42.20(c) to place the burden of persuasion on the patent owner to show that the proposed substitute claims are patentable over the prior art of record.[3]  Under this interpretation, “[o]f the already small number of cases where the Board decided a motion to amend, the Board granted or granted in part only 10 percent of such motions. Some have suggested that parties have simply stopped even trying to amend the claims because they see the effort as largely futile. . . . It is not in the interest of the patent system as a whole to invalidate a patent entirely if it actually describes patentable subject matter, and appropriately-scoped claims can be drafted. Therefore, the amendment process should allow the patent owner a meaningful opportunity to draft narrower claims.”[4]  “[D]espite repeated recognition of the importance of the patent owner’s right to amend during IPR proceedings—by Congress, courts, and the PTO alike—patent owners largely have been prevented from amending claims in the context of [post-grant trial proceedings].”[5]

In the 2017 en banc decision Aqua Products, Inc. v. Matal, the Federal Circuit rejected USPTO’s burden of persuasion on the patent owner. According to Aqua Products, Inc., in light of the relevant statutory and regulatory schemes, the legislative history, and the absence of anything that might be entitled to deference, the USPTO may not place the burden on patentee.[6] “[T]he burden of persuasion is on the petitioner to prove unpatentability by a preponderance of the evidence.” “[T]hat burden never shifts to the patentee” and “applies equally to proposed substitute claims.”[7]

In response to Aqua Products, Inc., the Board designated as precedential an order in Lectrosonics, Inc. v. Zaxcom, Inc. describing the burden of persuasion that the Board applies when considering the patentability of substitute claims.[8] The Lectrosonics order explained that under the current state of the law “the burden of persuasion ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence. The Board itself also may justify any finding of unpatentability by reference to evidence of record in the proceeding, for example, when a petitioner ceases to participate . . . .”[9] Additionally, prior to considering the patentability of any substitute claims, the Board first must determine whether the patent owner has met the statutory and regulatory requirements set forth in 35 U.S.C. 316(d) and 37 CFR 42.121.[10]

The USPTO published a ‘‘Request for Comments on Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board’’ in the Federal Register.[11] The majority of responses were in favor of allocating the burden of persuasion to the petitioner to show that any proposed substitute claims are unpatentable, and allowing the Board to justify any finding of unpatentability under any circumstance.[12] “Two commenters responded that the Board should never be able to assume the burden of persuasion on unpatentability itself, and three commenters believed that the Board should be permitted to justify findings of unpatentability of proposed substitute claims itself only in certain circumstances, for example, when a petitioner ceases to participate in a proceeding.”[13]

As shown in the table below,[14] the number of granted motions to amend claims declined from 2013 until 2017. Starting in 2017, it appears the number of granted motions to amend claims has slowly started to increase.

With the burden of unpatentability shifted from the patent owner to the petitioner, amending claims may not be as “futile” in the future. However, the shifted burden could be undermined by the Board’s ability to justify any finding of unpatentability “under any circumstance” “in the interest of justice.”  Although the changes to the rules of practice notes, “[t]he Office anticipates that the Board will exercise such discretion only in rare circumstances,” whether the number of granted or granted in-part motions to amend will significantly increase remains to be seen.

[1] Rules of Practice To Allocate the Burden of Persuasion on Motions To Amend in Trial Proceedings Before the

Patent Trial and Appeal Board, 84 Fed. Reg. 56401 (Oct. 22, 2019) [hereinafter 84 Fed. Reg. 56401] (to be codified at 37 CFR Part 42), https://www.federalregister.gov/documents/2019/10/22/2019-22768/rules-of-practice-to-allocate-the-burden-of-persuasion-on-motions-to-amend-in-trial-proceedings.

[2] Notice of Proposed Rulemaking on Allocation of Burdens for Motion to Amend, USPTO (Oct. 21, 2019), https://www.uspto.gov/about-us/news-updates/notice-proposed-rulemaking-allocation-burdens-motion-amend.

[3] 84 Fed. Reg. 56401, supra note 1, at 56402; see MasterImage 3D, Inc. v. RealD Inc., Case IPR2015–00040, at 2 (P.T.A.B. July 15, 2015) (Paper 42) (“The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner.”).

[4] Letter from Dr. Ron D. Katznelson, Vice Chair for Patents, IEEE-USA to Jacqueline Wright Bonilla, Acting Deputy Chief APJ Judge, Patent Board, at 2 (Dec. 21, 2018), https://www.uspto.gov/sites/default/files/documents/comment_ieee.pdf (quoting Remarks by Director Iancu at the American Intellectual Property Law Association Annual Meeting (October 25, 2018), www.uspto.gov/about-us/news-updates/remarks-director-iancu-american-intellectual-property-law-association-annual).

[5] Id. at 1-2 (quoting Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1299 (Fed. Cir. 2017) (en banc)).

[6] Aqua Prods., Inc., 872 F.3d at 1296, 1327.

[7] Id. at 1306 (citations and quotations omitted).

[8] 84 Fed. Reg. 56401, supra note 1, at 56403; Lectrosonics, Inc. v. Zaxcom, Inc., Cases IPR2018–01129, 01130 (P.T.A.B. Feb. 25, 2019) (Paper 15).

[9] Id. at 5.

[10] Id. at 4-5.

[11] 84 Fed. Reg. 56401, supra note 1, at 56403; Request for Comments on Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 83 Fed. Reg. 54319 (Oct. 29, 2018), https://www.govinfo.gov/content/pkg/FR-2018-10-29/pdf/2018-23187.pdf.

[12] 84 Fed. Reg. 56401, supra note 1, at 56403.

[13] Id. at 56404.

[14] The data was obtained from Docket Navigator’s Motion Success Search for PTAB Final Written Decision–Motion to Amend (Substitute Claims) or PTAB Final Written Decision–Motion to Amend (Cancel Claims) on October 23, 2019.

On August 22, 2019, the United States Patent and Trademark Office (USPTO) published a request for comments on patenting artificial intelligence inventions.  In addition to seeking general feedback from the public, the USPTO posed the following questions for comment:

  1. What are elements of an AI invention;
  2. How can a natural person contribute to conception of an AI invention and be eligible to be a named inventor;
  3. Do current patent laws and regulations regarding inventorship need to be revised;
  4. Should an entity other than a natural person (or company) be able to own a patent;
  5. Are there any patent eligibility considerations unique to AI inventions;
  6. Are there any disclosure-related considerations unique to AI inventions;
  7. How can patent applications for AI inventions best comply with the enablement requirement;
  8. Does AI impact the level of a person of ordinary skill in the art;
  9. Are there any prior art considerations unique to AI inventions;
  10. Are there any new forms of intellectual property protections that are needed for AI inventions (e.g., data protection);
  11. Are there any other issues pertinent to patenting AI inventions that the USPTO should examine; and
  12. Are there any relevant policies or practices from other major patent agencies that may help inform USPTO’s policies and practices regarding patenting of AI inventions.

Written comments must be received on or before October 11, 2019.  The AI inventorship issue came to a head earlier this year when the inventor of an algorithm named DABUS (device for the autonomous bootstrapping of unified sentience) filed beverage container and flashing light patent applications in DABUS’ name in the United Kingdom, Europe, and the United States.  Additionally, many today see patent eligibility as a significant hurdle to obtaining patent protection in AI technologies.

China and the United States lead in patent filings in all AI techniques and functional applications, as well as AI application fields.  See WIPO Technology Trends 2019, Report on Artificial Intelligence.   But there is currently no global consensus on the patenting of AI inventions.  The USPTO has not published guidance specific to artificial intelligence technologies, and such technologies are therefore treated under the general eligibility framework pursuant to 35 U.S.C. § 101.  In Japan, a software invention is patentable if its information processing aspects are required to be “specifically implemented by using hardware resources,” and the Japanese Patent Office has published patent examination case examples pertinent to AI-related technologies.  In China, a “computer program-related invention” with “technical characteristics will not be excluded from patentability.”  The Korean Intellectual Property Office (KIPO) guidelines provide that computer programs per se are not eligible for patenting, but “that if computer software is claimed in conjunction with hardware, then the combination, the operating method of the combination, and a computer-readable medium containing the software that implicates the combination is patent eligible.”  KIPO has also introduced accelerated examination procedures for applications related to technical fields in the “Fourth Industrial Revolution,” including artificial intelligence. The European Patent Office guidelines for artificial intelligence and machine learning patents provide that such technologies may be patent-eligible when those technologies are applied in technical fields of endeavor. See New EU Patent Guidelines May Affect Companies’ AI Strategy.

We expect many stakeholders to weigh in at the USPTO in view of the growing importance of AI innovations in the United States.  Indeed, earlier this year, President Trump issued an Executive Order on Maintaining American Leadership in Artificial Intelligence, noting that “[c]ontinued American leadership in AI is of paramount importance to maintaining the economic and national security of the United States and to shaping the global evolution of AI in a manner consistent with our Nation’s values, policies, and priorities.”  If the USPTO’s revised Patent Subject Matter Eligibility Guidance is any indicator, we may see further guidance from the USPTO leaning in favor of the patentability of AI inventions.