Patent Disclosure for AI Inventions in the U.S. and Europe: Key Considerations, Strategies for Disclosure

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Wednesday, January 24, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide patent counsel on disclosure issues in the U.S. and Europe when seeking patent protection for AI inventions. The panel will discuss the guidance from the relevant patent offices and will compare the European approach and the U.S. approach. The panel will offer best practices for navigating disclosure requirements when drafting patent applications to pursue in the U.S. and Europe.
Faculty

Mr. Distefano is a UK and European patent attorney whose practice focuses on patent prosecution, portfolio development and management, drafting, client counseling, and oppositions and appeals before the European Patent Office (EPO). He predominantly handles subject matter in the fields of electronic and mechanical engineering, and has extensive experience in dealing with the nuances of prosecuting computer implemented inventions in Europe.

Ms. Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help clients build, assert, and defend strategic portfolios of utility and design patents. She helps clients with patent prosecution, non-infringement and invalidity analyses, written opinions, and pre-litigation diligence as a patent agent upon registration before the U.S. Patent and Trademark Office (USPTO). She maintains an active patent prosecution and counseling practice, assisting clients with building strategic portfolios of utility and design patents worldwide. She helps clients assert and defend patent infringement claims before the U.S. International Trade Commission (ITC) and in U.S. district courts. Her technical experience spans a broad range of technologies.

Ms. Morozova's professional career has spanned across three countries and more than ten years of legal experience across two continents. Her unique background enables her to understand cultural nuances and helps her to advise a broad range of clients across the world. Qualified as a patent attorney in the United States and Europe, she focuses her practice on patent procurement and portfolio development in all fields of engineering on both sides of the Pond. She has technical expertise across different fields of engineering, most particularly in information technology and software, telecommunications, and mechanical. Her experience includes patent drafting and prosecution of patent and design applications internationally, developing and implementing IP strategies tailored to business plans, worldwide patent portfolio management, freedom-to-operate searches and infringement, and validity advice. She has worked with a diverse range of global clients from startups to large corporations and is well adept at understanding and meeting the different aims and requirements of each individual client.
Description
When it comes to AI inventions, there is uncertainty as to what comprises sufficient disclosure under Article 83 EPC in Europe and what is needed to meet Section 112 written description requirements in the U.S. As a result, it is important for patent counsel to carefully consider what to disclose and what not to disclose in a patent application when seeking patent protection for AI inventions.
Based on the decisions to date, the USPTO seems to be looking for more specific implementation details than in other computer-related fields. In Europe, AI inventions face stricter written disclosure scrutiny than in the U.S. To meet the tougher scrutiny, patent applications must explain the problem the AI invention solves and how it does so.
Listen as our authoritative panel of patent attorneys examines disclosure requirements in both the U.S. and Europe when seeking patent protection for AI inventions. The panel will discuss the guidance from the relevant patent offices and will compare the European approach and the U.S. approach. The panel will also offer best practices for meeting disclosure requirements for AI patents in the U.S. and Europe.
Outline
- Disclosure requirements
- U.S.
- Europe
- Disclosure risks for AI-related inventions
- Guidance from patent offices
- USPTO
- EPO
- Others
- Best practices for meeting disclosure requirements
Benefits
The panel will review these and other key issues:
- What disclosure risks must counsel address when seeking protection for AI-related inventions?
- What guidance do the patent offices provide related to disclosure with AI inventions?
- What strategies should counsel employ when determining whether and when to disclose?
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