US Patent Office: AI is all well and good, but only humans can patent things

The question of where AI sits in the legal personhood stack isn’t as simple as it may seem (i.e. “nowhere”) — but the U.S. Patent and Trademark Office today declared that, as with other intellectual property, only a person can receive its official protections. The news arrived via “guidance,” which is to say official policy […]

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IP for startups: When (not) to patent your inventions

When it comes to intellectual property, “patents” might spring to mind. A good patent can give startups a competitive edge, and once you’ve been granted one, nobody can come and mess with your technology, right? Not so fast. A lot is changing in the patents world, and things can quickly start to get complicated.

We spoke with Michele Moreland, general partner at Aventurine, a venture fund that is taking an IP-first approach to investing. Moreland has been at the cutting edge of IP strategy throughout her career and has been responsible for $3 billion in patent verdicts as a portfolio strategist. As a trial lawyer, Moreland represented some of the most important tech companies of our time, including Qualcomm, Amgen and Nvidia.

In this article, we’ll explore what to look for when hiring patent counsel, how much it typically costs to file a patent, the difference between provisional and full patents, how patents can be an important part of your IP strategy, and why trade secrets may be a better bet in some cases.

What’s a provisional patent?

The America Invents Act (AIA) was passed in 2011, dramatically changing how patents work in the U.S. Until 2011, the U.S. was a “first to invent” system, meaning that if you were the first person to come up with an invention, the patent was yours. The new system is more aligned with patent systems across much of the rest of the world and is a first-to-file system. We went from a race to build to a race to the patent office.

Of course, writing up a full patent application is nontrivial, and that’s where provisional patents come in. A provisional patent application (PPA) is a legal document filed in the United States Patent and Trademark Office that establishes a filing date. This patent does not automatically become an issued patent: Applicants have a year to apply for the full patent (sometimes known as a utility patent). A provisional application allows inventors to secure a “patent pending” status for their invention without engaging in the full, formal patenting process.

US Patent and Trademark Office notifies filers of years-long data leak

The federal government agency responsible for granting patents and trademarks has confirmed it inadvertently exposed about 61,000 filers’ private addresses in a years-long data spill.

The U.S. Patent and Trademark Office (USPTO) said in a notice sent to affected trademark applicants that their private domicile address — often their home address — inadvertently appeared in public records between February 2020 and March 2023.

U.S. law requires applicants to include their private address when submitting a trademark application in efforts to crack down on fraudulent trademark filings.

USPTO said the issue was discovered in one of its APIs, which allows apps used by both agency staff and filers to access a system for checking the status of pending and registered trademarks. (An API allows two things on the internet, such as an app and a server, to communicate with each other.)

USPTO said that the address data also appeared in bulk datasets that the agency publishes online to aid academic and economic research.

“When we discovered the issue, we blocked access to all USPTO non-critical APIs and took down the impacted bulk data products until a permanent fix could be implemented,” the notice read, which TechCrunch obtained from an affected filer.

When reached for comment, USPTO spokesperson Paul Fucito provided more details about the issue: “As indicated in our notice to impacted filers, while domicile addresses are required under trademark law, we took the voluntary step of masking this information in 2020 as part of our efforts to secure the data that the public accesses directly and frequently.”

“We regrettably failed to locate some of the more technical exit points and properly mask the data exported from those points. We apologize for our mistake and will do better to prevent such an incident from happening again, while also preserving our ability to crack down on the historic amount of filing fraud we’re seeing originate overseas,” the spokesperson added.

According to USPTO, the data leak affected about 3% of the total number of applications filed during the three-year period.

USPTO said the incident was resolved on April 1 when domicile addresses were masked and API vulnerabilities corrected.

The notice said that the agency has no reason to believe that the data has been misused.

US Patent and Trademark Office notifies filers of years-long data leak by Zack Whittaker originally published on TechCrunch

IPRally, a patent search engine powered by explainable AI, raises $10.8M

IPRally, a Finnish startup building a knowledge graph-based patent search engine, has raised €10 million ($10.8 million) in a Series A round of funding.

Founded in 2018, IPRally is one of a number of emerging players looking to infiltrate a billion-dollar intellectual property (IP) management market dominated by incumbents such as ClarivateAnaqua, and Questel. The Helsinki-based startup touts a modern AI-powered alternative to other keyword-based search engines, one that promises to help users search and categorize patents more quickly and accurately — with explainability at its core.

A big selling point is its underlying graph neural network that powers both technical and semantic understanding around patent data, meaning that the user is less reliant on exact keyword matches or technical expertise from an IP specialist. The company says it trained this neural network with data from millions of real patents, teaching it to “think” like that of a real-world patent examiner, but in a fraction of the time. In effect, IPRally doesn’t just read text, it strives to draw relationships between all the words and concepts in patent applications to generate the most relevant results.

IPRally: Knowledge graph Image Credits: IPRally

Additionally, another major factor at play here is explainability — that is, IPRally allows the user to dive into the processes behind the results to see exactly why the platform has delivered the results it has, and gain a better understanding of any relevant prior art.

IPRally: Explainability Image Credits: IPRally

The rights stuff

There has been some sustained interest in all manner of technology that promises to modernize IP management, with the likes of SoftBank and Tencent backing IP analytics platform PatSnap to the tune of $300 million back in 2021. And just last week, London-based RightHub raised a hefty $15 million seed round of funding for a holistic platform that connects all the strands and stakeholders involved in the IP management process.

In its short life so far, IPRally has amassed a fairly decent roster of customers including Nvidia, Dolby, and Bentley. And with another €10 million in the bank, co-founder and CEO Sakari Arvela said that they’re looking to extend IPRally’s scope beyond patent search and categorization.

“With this investment, we’re able to expand IPRally towards a more comprehensive patent insights platform that even more organizations can benefit from, without having to rely on multiple systems,” Arvela said in a statement.

IPRally’s latest fundraise, which comes a couple of years after it raised a €2.4 million seed tranche of funding, was led by Endeit Capital, with participation from Join Capital, Spintop Ventures and Icebreaker.vc.

IPRally, a patent search engine powered by explainable AI, raises $10.8M by Paul Sawers originally published on TechCrunch

Where should US-based startups file their patent applications?

Imagine you have developed a groundbreaking product that is going to revolutionize your industry. You do not want your competitors to copy the product. At the very least, you want them to pay you compensation for making a competing product.

You know that if you want to protect the product, you should file a patent application. So, you hire a patent lawyer and file a U.S. patent application. Problem solved, right? Time to start manufacturing and marketing your product.

But wait, a patent is a national right. A U.S. patent would only stop the manufacture, sale, use or importation of competing products into the U.S. Competitors from other countries will still be able to manufacture and sell competing products outside the U.S.

What can you do to stop competition in other countries? Well, you can file a patent application in each of those countries. However, the cost of filing a patent application in every country can be prohibitive even for the largest companies. Further, your product may not be limited to one invention and may encompass several inventions.

Each of these inventions may need its own patent application, which can quickly multiply the cost to your business and make filing for patent protection prohibitively expensive. Further, differences in the law in some countries can result in you spending significant money for little gain. This does not mean you should give up on patent protection in other countries, but you will want to be judicious in deciding where to foreign file.

When selecting a country to foreign file, a business should consider how likely a competitor is to sell a competing product in that country.

This article describes several criteria for helping decide in which countries to seek patent protection. It is important to analyze these criteria and decide whether foreign filing is appropriate before publicly disclosing the invention, as many countries do not allow you to obtain patent protection after the invention has been publicly disclosed.

Where to pursue foreign patent protection

There are several reasons to file for foreign patent protection, including stopping competitors, marketing benefits, manufacturing protection, licensing and inventor location. Foreign filing can be prohibitively expensive, and you should engage in a thorough analysis when devising your filing strategy.

You will want to analyze each of the reasons to foreign file. You should consider whether it makes business sense to file in several countries, in a more tailored list of countries or in a particular country. We will describe the different considerations when preparing a foreign filing program and conclude with examples of how foreign patent protection may be pursued for two different products: a communications chip and a cell phone.

Stop competitors

The primary reason to foreign file is perhaps the most obvious — to prevent competitors from making, using, selling or importing a competing product that encompasses the invention.

10 IP and commercial contract loose ends to tie up before you approach investors

Last year saw investors throwing record amounts of dollars into startups, but recent geopolitical events, an anticipated increase in interest rates and other factors are leading to a slowdown in venture capital financing.

Since the pandemic began, intellectual property assets have seen an increase in value and are increasingly becoming a focus for investors looking to spend their stockpile of dry powder. For startups, ensuring their intellectual property and commercial contracts are in order can be helpful in achieving smooth financing.

Waiting to tackle these issues during a financing could cause delays, result in time-consuming and expensive remediation, and, in the worst case, lead to lower valuations.

Below is a list of 10 intellectual property and commercial areas that investors look at during due diligence, and steps that startups can take to better prepare for these issues.

Ensure former employers cannot claim IP ownership

Investors are particularly concerned about startups having exclusive ownership of their intellectual property. This exclusive ownership often faces risks when a founder moonlights on their new startup while still employed by another company, especially if the former employer offers a competing product or service.

The best IP strategy is to file for federal protection as soon as possible.

A founder should ideally begin working on their startup after ending all previous employment. They should ensure and document, if possible, that they don’t start any work on their new product or company on their former employer’s time, using its tools, customer lists or confidential information.

Founders should also carefully review any non-complete and non-solicitation provisions when starting a new company and hiring any former co-workers or vendors.

If a founder is developing a product or service that will compete with their former employer, they should carefully document the development process, and even use a clean-room software development methodology to ensure that the product or service was created independently of their former employer.

Document IP created by employees and contractors

The fact that a person is employed by a company is typically insufficient for it to secure any IP developed by the employee.

One of the easiest ways for companies to protect their IP is to have all employees, advisers, contractors, interns and other entities enter into written confidentiality and invention assignment agreements. Although these agreements are typically short and simple contracts that are not heavily negotiated, companies often fail to obtain them, which can result in them not owning key aspects of their IP.

6 questions investors should ask when evaluating psychedelic biotech companies

As a venture firm that invests in psychedelics, we receive hundreds of pitches every month from founders developing psychedelic therapeutics.

Startups are developing treatments for depression by combining psilocybin with psychotherapy, creating new delivery methods, like dissolving strips and patches, and even formulating compounds that rewire neural circuits without hallucinogenic effects.

Once fringe, underground, illegal or just limited to ceremonial use by Indigenous cultures, psychedelics are going mainstream in medicinal form. Psychedelic medicine is spawning new companies in every part of the healthcare and life sciences ecosystem, including areas within drug discovery, manufacturing, clinics and retreats, telemedicine and other digital therapeutics, as well as consumer packaged goods.

Our fund has invested more than $15 million in companies developing psychedelic therapeutics. We believe psychedelic medicine and progress in digital therapeutics, precision psychiatry and neurotechnology will revolutionize how mental health is treated. Unlike traditional antidepressants and pharmaceuticals, psychedelic medicine has the potential to help people address the root causes of their mental health concerns rather than just symptoms.

A landmark study by Johns Hopkins found that psilocybin treatment for major depression is four times more effective than traditional antidepressants. Other benefits include their ability to promote the development of new neural pathways and increase empathy and openness, which can be beneficial states to facilitate healing.

We believe in a future where psychedelic therapy will be as common as going to the dentist, but the path won’t be easy.

We believe in a future where psychedelic therapy will be as common as going to the dentist. But the path won’t be easy: Many biotech companies working with psychedelic compounds must complete multiyear clinical trials that can cost over $100 million before winning FDA approval, similar to any other biotech company.

So how do we pick which companies to invest in? Here are six key questions we ask when evaluating psychedelic biotech companies:

Does the team have the skills, experience and values to bring a product to market?

The most important factor that can make or break a psychedelic biotech company is its team. Psychedelic medicine is a multidisciplinary domain, so it’s important that the team has a strong foundation in psychedelics, biotechnology, neuropharmacology and/or psychiatry.

That means in biotech, unlike traditional tech companies, it’s rare for a wunderkind first-time founder to start a successful company given the scientific expertise and network required, which may need decades of experience.

It’s also important that the team shares our values when it comes to safety and patient well-being. We especially like teams that have psychedelic experience and are grounded in psychedelic history through academic research, field work or personal exploration. These companies will have a leg up on the competition in areas like product development, culture and recruitment.

Can an AI be properly considered an inventor?

Several years ago, I wrote a piece titled “How AI and copyright would work.”

As I looked over the state of several interesting questions at the intersection of artificial intelligence and copyright at that time, my bottom line was pretty simple: If the copyright laws and regulations required a work to contain the expression of a human person, then that body of law (especially the text of the statutes, e.g., Title 17 in the U.S., but also the common law or civil law history of cases) did not yet countenance the assertedly “independent” creations of an AI, of which there are many types.

That is, at least in the U.S., essentially still the case. However, there’s been a significant volume of water that’s passed under the policy and lawmaking bridge since then, so I wanted to revisit the question.

First, let’s back up a little.

I have to admit that my reasoning in 2018 was narrow rather than broad. In this way, it was also based on that of the U.S. Copyright Office or USCO (see, for example, the Compendium of U.S. Copyright Office Practices, Third Edition (2021), p. 384, which is similar on this point to the earlier edition I used at the time), and so I focused on the “expression” requirement for copyrightability.

The work – and let’s note that it doesn’t have to be considered aesthetically “good” or have required a lot of skill – must simply be original (meaning that it was independently created and has at least a “modicum” of creativity) and an expression of some sort. This is why an unadorned set of directions, such as stripped-down basic instructions in a baking recipe, does not qualify, but “Mastering the Art of French Cooking” by Julia Child (a book that contains much more expressive text, which served to make it a bestseller) does.

While I am fully at peace with the personhood of (fictional) Commander Data of “Star Trek” in the 24th century, in our world devices by themselves do not and cannot express anything (even if your copy of Alexa or Siri appears to). I can’t say that I know how long that will continue to be the case, but even “Star Trek” suggests that it may be at least 350 years.

In 2020, the USCO and the World Intellectual Property Organization (WIPO) hosted a “symposium that took an in-depth look at how the creative community currently is using artificial intelligence (AI) to create original works.” And then, in 2021, the USCO and the U.S. Patent and Trademark Office (USPTO) held a second symposium looking at the potential for change in the treatment of machine-created works.

I still think we are at the very beginnings of what looks to be a long period of change in the interplay of technology and the law in this domain, but it is equally clear to me that the play has started to move.

The legal and regulatory environment for these tools remain at the forefront of copyright policy, and we observe that government agencies entrusted with administering these issues are thinking about them and soliciting views from the public about them. More about that in a moment.

Beginning in 2019, perhaps jumping the gun a bit on the USCO/USPTO/WIPO’s “let’s think about it” approach, something truly interesting happened in this domain.

Stephen Thaler, owner and developer of a patent-writing program known as DABUS, submitted patent applications in several countries. As a result of these applications, the government of South Africa recognized DABUS as the inventor on a patent.

Thaler, an advocate of recognizing these devices as inventors, clearly believes the time has come, stating, “It’s been more of a philosophical battle, convincing humanity that my creative neural architectures are compelling models of cognition, creativity, sentience, and consciousness. … The recently established fact that DABUS has created patent-worthy inventions is further evidence that the system ‘walks and talks’ just like a conscious human brain.”

(We should bear in mind, however, that an “author” in copyright is not an identical legal construction with that of an “inventor” in the domain of patents, but they are closely related concepts.) We also need to consider that the South African patent system does not involve an examination of the substance of an application, but unlike in a lot of countries leaves both first consideration and final resolution of patent validity to the courts, and so the patent grant was in some sense automatic and not policy-driven.)

Importantly, the U.S., the U.K., and the European Patent Offices (all of which do preliminary consideration of patentability) rejected this same patent application on the basis of its ineligibility. Australia, in effect, seconded the South African motion, at least to the degree that the application met its technical requirements “to the letter of the law” of Australian patent statutes.

We may point out that while the patent grant under South African law is narrow and technical, the question is no longer merely theoretical and we can perceive a threshold as having been crossed. For the purposes of this essay, I think South Africa and Australia have called the question: Can AIs be inventors, too? If so, should they be?” The question of whether AI ought to produce “authorship” for purposes of copyright cannot be far behind.

Most recently, over in the U.K., they are in the midst of an in-depth consultation of the whole issue. And I think the issues they are studying are the right ones:

  • Copyright protection for computer-generated works without a human author. These currently may be protected in the U.K. for 50 years. But should they be protected at all? And, if so, how should they be protected?
  • Licensing or exceptions to copyright for text and data mining. This is often significant in AI use and development.
  • Is there a case for protecting AI-devised inventions by IP rights? If yes, how should they be protected?

As I wrote earlier, “In my view, a self-aware, autonomous AI would be the prerequisite for its works to be protectable by copyright. At that time, such a revolution in technology might bring along with it a much greater revolution in society, with the law, including copyright law, changing, as well.”

I still think we are at the very beginnings of what looks to be a long period of change in the interplay of technology and the law in this domain, but it is equally clear to me that the play has started to move.

Google’s loss to Sonos settles it: Big Tech has an IP piracy problem

The U.S. International Trade Commission ruled on January 6 that Google infringed Sonos’ patented innovations in wireless speaker technology. This may sound like an obscure legal ruling about a complicated fight over intellectual property. But it confirms a problem that threatens America’s innovation economy and its international economic competitiveness.

The problem? Intellectual property theft.

Years ago, Big Tech companies like Google decided that they profit more by stealing smaller companies’ intellectual property than buying or licensing it. Google, Apple, Samsung and others — with cash reserves in the tens, even hundreds, of billions of dollars — do not sweat legal fees, court costs or even damages they might have to pay for this theft. Google has a reported $142 billion in cash in the bank. This is far beyond what most companies make in total annual profits.

Big Tech thus takes what it wants. It then uses scorched-earth litigation tactics to beat up on complaining IP owners. It drags out litigation over many years and imposes massive litigation costs on IP owners seeking justice. Many IP owners don’t even file a lawsuit. They know it is ruinous and self-defeating to try to protect what is rightfully theirs.

Simply put, Big Tech benefits from stealing IP. The legal costs and potential damages, if ever issued after years of litigation, are paltry by comparison.

A few companies have fought back, and the results confirm this predatory infringement practice. The story of Google’s abuse of Sonos is one of the more telling ones.

Sonos is a classic American success story, and Google’s piracy of its technology is a tragedy. Sonos began as a disruptive startup in 2005 with its groundbreaking patented innovation in wireless speakers. It secured a licensing deal with Google in 2013, when Google agreed to make its music service, Google Play Music, work with Sonos speakers.

Simply put, Big Tech benefits from stealing IP. The legal costs and potential damages, if ever issued after years of litigation, are paltry by comparison. Adam Mossoff

But Google merely used this deal to gain access to Sonos’ technology. It soon began making its own devices with Sonos’ technology, including speakers and other audio equipment that competed directly with Sonos’ speakers and other products in the marketplace.

Google did not have Sonos’ development costs to cover, and it could subsidize its new products and services with its massive profits from its search engine business. Thus, Google undercut Sonos’ prices — a common commercial practice by patent pirates.

Sonos first attempted to negotiate a deal with Google, asking Google to simply pay for a license for the technologies it pirated from Sonos. Google held out for years, dragging out negotiations while its profits ballooned and Sonos lost more and more money. Seven years later, Sonos was left with no choice but to defend its rights in court. Sonos sued Google in 2020.

Sonos also sued Google at the International Trade Commission. This special court can move faster than regular courts in prohibiting infringing imports. But it can’t reward damages.

This past August, a judge at the International Trade Commission ruled that Google had indeed infringed five of Sonos’ patents. Last week, the commission reaffirmed this decision. Google still calls Sonos’ claims “frivolous” and promises to keep fighting.

This is just one prominent example of Big Tech’s illicit use of other people’s patented technologies. It is so common it now has a name: predatory infringement. Legal scholars and policy wonks call it “efficient infringement.” In plain English, this is piracy.

Unfortunately, Big Tech has been attacking America’s patent system to further support its piracy. Google and other companies have spent millions over the years lobbying Congress and regulators to weaken and eliminate patents, rigging the system against innovators. For instance, they created the “patent troll” boogeyman to smear patent owners who sue them for infringement — as if the problem was not their own theft, but their victims’ gall in fighting back.

Washington must act to protect the innovators and creators who rely on patents as a key driver of the U.S. innovation economy. Congress should reintroduce and enact the bipartisan STRONGER Patents Act. This law would bring balance back to the patent system by reforming some of the legal rules and institutions that Big Tech lobbied to create and that are key to its predatory infringement tactics practices.

Sonos’ legal victory over Google confirms what policy wonks and lawyers have been talking about for years: Big Tech’s predatory infringement is 21st-century piracy, and Sonos is just one of many victims. Washington can and should help end this piracy.

Google infringed on five Sonos patents, according to preliminary ruling

Way back in January 2020, Sonos sued Google over patent infringement. Today, the streaming speaker company scored an early victory with the U.S. International Trade Commission. A preliminary ruling penned by ITC chief administrative law judge Charles Bullock finds that Google infringed on five patents.

“Today the ALJ has found all five of Sonos’ asserted patents to be valid and that Google infringes on all five patents,” Sonos Chief Legal Officer Eddie Lazarus said in a statement to TechCrunch. “We are pleased the ITC has confirmed Google’s blatant infringement of Sonos’ patented inventions. This decision re-affirms the strength and breadth of our portfolio, marking a promising milestone in our long-term pursuit to defend our innovation against misappropriation by Big Tech monopolies.”

The finding is still very much early days for what’s likely to be an even more protracted battled battle between the two companies. Sonos’ complaint stems from Google’s own family of streaming speakers. Google entered the category, long dominated by Sonos, roughly four and a half years ago with the original Home speaker. The line now includes a number of products now listed under the Nest banner.

“Google has been blatantly and knowingly copying our patented technology,” Sonos CEO Patrick Spence said in a statement when the suit was initially filed. “Despite our repeated and extensive efforts over the last few years, Google has not shown any willingness to work with us on a mutually beneficial solution. We’re left with no choice but to litigate.”

Sonos noted similar issues with Amazon devices (Google’s chief competitor in the category) at the time, but the company opted to focus its time, money and resources on a battle with Google, instead.

Ultimately, Sonos is hoping to use the ITC to block the import of those smart speakers, along with other Google hardware, including the Chromecast and Pixels. Such a decision would be a massive hit to Google’s hardware ambitions. A final ruling isn’t expected until December 13, however, after which point a potential import ban would take 60 days to go into effect.

“We do not use Sonos’ technology, and we compete on the quality of our products and the merits of our ideas,” Google Spokesperson José Castañeda said in a statement. “We disagree with this preliminary ruling and will continue to make our case in the upcoming review process.”