By: Carl A. Kukkonen and Matt Johnson

Last week, the United States Patent and Trademark Office (USPTO) hosted the annual meeting of the heads of the world’s five largest intellectual property offices, commonly referred to as the IP5 (see a related press release).  In addition to the USPTO, the members of the IP5 include the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO). Together, the five offices handle approximately 80 percent of the world’s patent applications.

The goal of the IP5 is to eliminate unnecessary duplication of efforts amongst the IP5 offices as well as increasing the efficiency of patent examination efficiency and quality.  During the meeting, the impact of artificial intelligence (AI) on the patent system was identified as one of the main strategic priorities for the offices.  The EPO (see a further related press release) was designated to lead the efforts to further explore how AI-related tools can help achieve the goals set out by the IP5.

It is generally believed that the application of AI technology to patent office processes can greatly increase efficiencies and potentially reduce overall costs.  AI can be used, for example, to properly classify patent applications, for prior art searches, image classification and searching, machine translations and the like.

The impacts of AI on Patent Office practice and procedure could be pervasive.  For example, the PTAB has struggled with how best to deal with motions to amend during PTAB trials.  PTAB trials are not optimized for claim examination, and the compact timeline of a trial forces patentability challenges to amended claims to be made over a period of just a couple of months.  AI prior art searching could be incorporated into the PTAB amendment process to provide Board panels with a sanity check on amendments to lessen the chance that undeserving claims survive trials.

As AI technology develops, more opportunities to incorporate AI tools into patent processes to improve the quality and strength of the patent system are certain to follow.


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An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.