When we think of a “production environment,” a law firm patent practice is not usually the first thing that comes to mind. But why not? Patent practices are highly process-oriented, and they certainly involve “manufacturing” work product, primarily in the form of new patent applications and office action responses. This article discusses how, with a production view on patent procurement, exploiting the principles of lean production can be a compelling way to adapt to tough issues presently roiling the patent ecosystem.
We describe how to use artificial intelligence (AI) techniques to partially automate a type of legal analysis, determining whether a patent claim satisfies the definiteness requirement. Although fully automating such a high-level cognitive task is well beyond state-of-the-art AI, we show that AI can nevertheless assist the decision maker in making this determination. Specifically, the use of custom AI technology can aid the decision maker by (1) mining patent text to rapidly bring relevant information to the decision maker’s attention, and (2) suggesting simple inferences that can be drawn from that information.
How can Internet research be used properly and reliably in law? This paper
analyzes several key and very different issues affecting judges, jurors, and lawyers.
With respect to judges, this paper discusses the rules of judicial conduct and how
they guide the appropriate use of the Internet for research; the standards for judicial
notice; and whether judges can consider a third category of non-adversarially
presented, non-judicially noticed factual evidence. With respect to jurors, this paper
discusses causes of and deterrents to jurors conducting Internet research during
trials; and the recourse available to parties who are adversely impacted by such
behavior. With respect to lawyers, this paper discusses reliance on and potential
pitfalls of using free Internet resources to conduct legal research; the dangers of
rotten Internet links; and evidentiary considerations in citing to Internet evidence.
This volume will include scholarship from H. Albert Liou and Jasper L. Tran, who explore how Internet research can be used properly and reliably in law; scholarship from Megan Svedman examining issues with the use of copyrights in the world of artificial intelligence; scholarship from Kevin Ashley and Dean Alderucci, discussing the use of artificial intelligence techniques to partially automate patent claim analysis in regards to the definiteness requirement; and scholarship by Ian Schick discussing how the principles of lean production could be adapted to address issues in the patent ecosystem.
Topic: Helsinn v. Teva and the America Invents Act
Guest: Professor Timothy R. Holbrook of Emory University School of Law
Timothy R. Holbrook is Vice Provost for Faculty Affairs and Asa Griggs Candler Professor of Law at Emory University. He is an internationally recognized patent law scholar whose work has explored the role of patent disclosures, the territorial limits of U.S. patent law, and the impact that various biotechnologies and additive manufacturing will have on our patent system.
Music written and supplied by Dr. Robert L. Eoff, Associate Professor in the Department of Biochemistry and Molecular Biology at The University of Arkansas for Medical Sciences.
The United States Patent and Trademark Office (“USPTO”) has the privilege of reviewing hundreds of thousands of inventions each year before the public learns about them. Consequently, the USPTO is uniquely positioned as a funnel through which the Government can collect information about new technologies and determine which ones have implications for the safety and welfare of the nation. Under the Invention Secrecy Act, the Commissioner for Patents may order that an invention for which patent protection is sought be kept secret if disclosure of the invention might be detrimental to national security.
In order for the USPTO to review patent applications and then to do its part in protecting national security, while respecting the rights of inventors, the Invention Secrecy Act provides for the implementation of a framework with three primary components: (1) the screening phase, which applies to all patent applications; (2) the maintenance of secrecy phase, which applies to those inventions for which the Government has made a determination of risk to national security; and (3) the compensation phase, which is the phase during which a patent applicant or patentee can request compensation for either or both the loss due to being required to keep the invention secret and the government’s use of the invention prior to issuance of the patent. Failure of inventors to abide by the terms of and to follow the procedures promulgated under the Invention Secrecy Act can have dire consequences, and thus, applicants and persons who counsel them should be aware of its contours, how the USPTO implements it, and how courts interpret it.