Patent applications relating to AI-based inventions frequently show the same mistakes: Divided infringement, insufficiency of disclosure, and lack of plausibility. In this episode, our patent attorney Dr. Patrick Heckeler tells you how to avoid these mistakes.

For more on patent prosecution, please visit our website: https://www.bardehle.com/en/competences/legal-areas/patent-prosecution

Today, I would like to provide you with some guidance on how to avoid three typical mistakes that I frequently encounter in patent applications relating to AI-based inventions.

These mistakes are:
1) Divided infringement,
2) insufficiency of disclosure, and
3) lack of plausibility

So, how can these mistakes be avoided?
In practice, an AI model may be trained by a first entity, whereas the trained model may then be used by a second entity. Hence, a claim that is directed at both training and using a model may be neither infringed by the first nor by the second entity. To avoid such case of divided infringement, training a model and using the trained model should be claimed separately. This will significantly simplify asserting your patent towards potential infringers. 

To meet the requirement of disclosing your invention in a manner sufficiently clear and complete for it to be carried out by the skilled person, it might be helpful to supplement your application with some sample training data, details on the model used, and details on the training method. This may enable the skilled person to create their own set of training data that can be used for training a model according to your invention.

Finally, to make it plausible that your invention actually produces the alleged technical effect, I suggest incorporating some test or measurement results into the application that show how well your AI-based invention operates.

IP Experts

Avoiding mistakes in AI-related patent applications

IP Quick Tip: Avoiding mistakes in AI-related patent applications

BARDEHLE PAGENBERG is one of the leading IP law firms in Europe which has pooled the strengths and competences of patent attorneys and attorneys-at-law for more than 40 years, clearly setting itself apart from many other IP law firms. 

The diverse client base appreciates the intense cooperation between attorneys-at-law – handling infringement cases before German civil courts through all instances on the one hand, and patent attorneys representing the client in proceedings before the Patent Offices and the Federal Patent Court on the other hand. We are also in a position to offer the invaluable input of our senior consultants who in their previous careers were leading German IP judges or members of the Boards of Appeal of the European Patent Office (EPO).

BARDEHLE PAGENBERG provides its clients with excellent services in all fields of Intellectual Property – from the first idea through to the launch, exploitation, enforcement and strategic management, particularly in the legal areas of patent law, trademark and design law, unfair competition law, antitrust law as well as licensing and technology transfer. To ensure processes of the highest standard, BAREDEHLE PAGENBERG operates according to a quality management system compliant with ISO 9001 and regularly submits itself to audits for recertification purposes. 

The full-service IP firm is regularly chosen by global companies which value its international availability and diverse team. Additionally, various German blue-chip companies and small and medium sized businesses, market leaders in niche technologies, entrust BARDEHLE PAGENBERG with their IP business.

IP Quick Tip: Avoiding mistakes in AI-related patent applications

BARDEHLE IP Experts