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ARTICLE · 13 APRIL 2018

Protecting Artificial Intelligence And Big Data Innovations Through Patents: Functional Claiming

Jones Day
Jones Day
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Companies are increasingly investing in AI innovations to reduce costs and increase accuracy for tasks and analyses that might otherwise require human intelligence and judgment.

United StatesIntellectual Property
Carl Kukkonen III
Carl Kukkonen III
Douglas Pearson
Douglas Pearson
Ognian V. Shentov
Ognian V. Shentov
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In Short

The Situation: Artificial intelligence ("AI") and big data ("BD") innovations are driving forces of the current technological revolution, dramatically changing the way we search for information, communicate, operate devices, manufacture things, and solve problems. Companies have traditionally turned to patents as the strongest mechanism to protect their innovation and secure investment.

The Issue: The U.S. Supreme Court's decision in Nautilus, Inc. v. Biosig Instruments Inc. (Sup. Ct. 2014) has made it easier to invalidate patent claims on grounds of indefiniteness, and the Federal Circuit's decision in Williamson v. Citrix Online (Fed. Cir. 2015) has made it easier for claims to have a "means-plus-function" interpretation even where unintentional. Patent coverage for AI- and BD-related innovations relies heavily on functional claiming, and successful functional claim drafting requires attention and strategies for navigating the potential pitfalls.

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