There are trends in patenting. Having been working in the field for a couple of decades I have noted that subject matter patentability, hot technologies and the ease of patenting vary over time. So does perceived wisdom regarding employing in-house counsel or outsourcing to an external service provider; whether to use provisional applications; how widely to patent; whether to file PCT or directly under Paris Convention, and, if so, whether to request international examination under Chapter II. and even if one should bother filing patents at all.
The current flavor of the
month season is Artificial Intelligence. It is so important and so central to the economy and human progress, that it has even warranted its own dedicated acronym “AI” (not to be confused with Anguilla when selecting countries for filing abroad – and even I have never filed a patent there).
At the Best Practices in Intellectual Property Conference back in April, there was a session on AI and Cannabis (an odd combination). After the conference I was supposed to fly to the US for an American Bar Association conference where there was a session on AI, but couldn’t due to passport issues.
Last week, Adv. Asa King Former Israel Commissioner and now partner at Naschitz Brandes Amir hosted a very interesting morning seminar on AI. As Asa specifically requested I get the name right, I have copied the spelling carefully. For the rest of this article, I shall refer to them as Nachos. I find this less intimidating and more friendly, if a little hot and spicy.
On 16 July, the Israel Innovation Authority together with WIPO, the Ministry of Justice and the Israel Patent Office will be hosting an International Conference on Emerging Technologies and Intellectual Property – Connection the bits. They ask the question: “How does the AI and Big Date technologies, are challenging the world of law and intellectual property?” (One assumes that they mean big data and not medjools, but are simply too lazy to get a native English speaker check the English for their International Conference).
So there you have it, cannabis, nachos or dates. The High, the Hot and the Sweet.
In addition to Asa Kling, the Nachos conference last week featured former US Commissioner David Kappos now working at Cravath, Swaine and Moore, and Einav Zilber, the former IP counsel of Applied Materials, Israel. Both of these are good speakers. Both spoke at the Best Practices Event as well. In addition to Asa Kling, the program also included Uri Buberman the Head of IP at Mobileye, and Yoav Shoham of AI21 Labs and Stanford University.
For those that missed an AI nibble at the Nachos conference, the Israel Innovation Authority and Israel Patent Office event will also feature Adv. Kling. We assume that them providing him with this platform was a totally professional decision, as indeed are all speaker choices at these events. Actually, the forthcoming event is not the first time that the Israel Patent Office has discussed and patenting Software in the US and Artificial Intelligence. They discussed both in a conference back in April. According to a reliable source, currently the IPO has no plans to replace their Examiners with artificial intelligence. At most, they are exploring ways of using artificial intelligence to imrove the quality of their work. (think of adding RAM chips to the mother board).
I made a mistake. I read the address of Nachos, 5 Tuval Street Tel Aviv,. Since I knew exactly where Tuval Street was, having been to law firms and patent offices in the area of the Diamond Exchange, I set out to brave the traffic and attempt to get into North Tel Aviv by car for a 9 am kick-off.
After parking in the fixed price car park designed to keep cars out of Tel Aviv, I took a platform ticket and used the train station to cut across the bridge to the diamond exchange, quickly found Tuval Street and worked out which way the numbers went. I walked briskly down the road and discovered that there was nothing under number 9. The central region is one big conurbation and Tel Aviv runs into Jaffa which runs into Holon as one moves South. Travelling East, one can find oneself in Ramat Gan. I was on Tuval Street in Ramat Gan and needed Tuval Street Tel Aviv which was about a mile away. I debated hiring an electric scooter or skateboard or something, and wisely took a taxi. That way I arrived, if a little late and out of change.
In distance, the walk through the Nachos office from the lifts (elevators) through the library, past three large conference rooms to the lecture hall seemed similar to that along Tuval Street in Ramat Gan. However the air-conditioning was working nicely.
When I arrived David Kappos was coming to the end of his session but from what I could make out, he was reviewing the positions of the various patent offices on the patentability of software – what in the US is known as §101 objections.
There was a lovely little coffee machine that produced a passable cappuccino after pressing a couple of buttons. Certainly the coffee was better than the instant rubbish that the IPO serves. I suppose it is because Nachos prides itself on the quality of its
Adv. Asa Kling himself spoke next. He was wearing a light grey suit and a sky blue tie and looked over-dressed, as befitting a partner in a large law firm, but less formal than the type of suit and tie he wore when speaking as the Commissioner of Patents and Trademarks. He also seemed more animated and less restrained, bouncing about as he lectured. The lecture itself was more of a compendium of the problems of patenting software in general and AI in particular. There was a quick nod to the Crested Black Macaque that photographed itself using David Slater’s camera, and the usual questions of whether an animal or a computer can create copyrightable works and who owns the copyright were asked.
The session was good on questions and poor on answers. Adv. Kling took three opportunities to inform us that he was the guy who could help, but we were aware that Nachos was hosting the event in order to showcase him anyway. Kling has a computer degree. Kappos was vice president and chief legal counsel of IBM prior to his stint at the USPTO, both of them were, presumably, capable of providing valuable tips. Instead, the talks were a little general and more about the problems than the solutions.
Einav Zilber discussed managing an international multi-partner project. This was quite interesting. Back in the day, I did a work placement at the National Physics Laboratory in London on an international project by standards institutes, universities and industry on standardizing coating quality standards and testing. I have also sat on international committees comparing intellectual property laws in different jurisdictions, and, of course, I am familiar with FRAND. Einav’s talk somehow falls in the intersect of these activities and was very interesting and relevant.
There was then a panel discussion but nothing particularly mind-blowing was revealed. Still what is clear is that both Adv. Asa Kling and Adv. David Kappos have an understanding of computer technology, government policy and patent litigation. Einav who is now an external counsel to Applied Materials and interested in helping other companies develop and manage IP departments, has a lot of experience with that.
So, for those of you wondering if there is life for after being Commissioner, the answer is “yes Jim, but not as we know it.” Is Adv. Kling going to set up a virtual reality patent department using artificial intelligence to draft and prosecute patents, or is he about to recruit experienced patent attorneys? Who
Of course it all starts with patent drafting and prosecution. Many senior IP personnel don’t themselves draft patents and haven’t for years. I do write a patent application every week or two, and have successfully drafted patents for image analysis and other AI inventions, but they weren’t called that at the time. My main strongpoint is fast turnaround and a very high success rate of prosecution. I think one reason I draft applications myself is for drafting therapy. It is a welcome break from blogging.
I suspect if litigation of a software patent were to become an issue for one of my clients, I would consider retaining Adv. Kling and/or Kappos. However, I am not sure either would be my first choice for outsourcing patent drafting to.
Writing patent applications is a demanding skill. It is not easy, as one cannot know all the prior art, with patent applications typically taking 18 months from filing to publish, and journal papers also taking longer than they should. Software has always been a little more difficult to pin down than inventions in other fields and this also makes it more difficult to search. I don’t accept that software should be considered as ‘abstract thought processes’ and subject to §101 objections. From a policy perspective I believe it can be examined in terms of novelty, obviousness and utility like other technologies. However, this is not exactly the way that patent offices see things.
There is an objective problem that best practices change with court rulings and one writes an application on a date where the case-law and guidelines to examiners states one thing, and it is examined later, when the law may have changed. After issuance the patent may be kept in force by paying annuities and renewals, but due to subsequent rulings can be invalid. After the Federal Circuit Court of Appeals was set up to review patents, they justified their existence and powers by widening the space between the goal posts. The US Supreme Court eventually reversed the patent. With software it is not just that players may be sent off side and the goal posts move, but the game is more like playing pinball on a ship’s deck in a storm.
Ultimately, clients need IP protection so we struggle to identify and define the patentable inventions and write up the clearest and best specification we can. Then, when the application comes up for examination we deal with the §101 objections using best practice at this later date.
I do not know Ori Buberman from Mobileye. I got the impression that he is ex-Reinhold and Asa knew him from there.
Clearly, someone, presumably Buberman, has done I good job with Mobileye’s IP, as this is much of what IBM was paying for in the 15.3 billion dollar takeover deal. Mobileye’s patents are available on line and anyone can see how they are written and how image analysis and decision making algorithms are claimed therein. Still it would have been nice, of perhaps challenging, had Buberman given a brief overview of Mobileye’s overall IP Strategy and their patent drafting strategy, before and after Intel’s takeover.
Unlike the recent AGM of the AIPPI hosted by Reinhold Cohen, the refreshments at the event were catered by Biscotti which is Kosher. There were vegetable dips but no nachos. The audience was invited to a networking lunch which included focaccia and pasta. I’ve been told that the Judean Desert is the world’s smallest desert. To my mind, this is not true. The smallest dessert is the French Macaroon, and Biscotti’s were first rate.
The conference attracted about 80 participants and these included a fair number of familiar faces. I am grateful to Naschitz Brandes Amir for inviting me. They have successfully represented me in the past and are indeed a top-notch law firm.