How to Help Data Scientists Overcome Their Patent Doubts

By Jose Nunez
January 18, 2020

“Many data scientists tend to wait until their solutions are completed, with a prototype up and running, before they reach out to their employer’s legal team with a description of the invention. Companies and data scientists should make sure to put a stake in the ground as soon as possible to set an early priority date before the competition does.”

https://depositphotos.com/13469724/stock-photo-business-person-against-the-blackboard.htmlWhen discussing patentable inventions with data scientists, I often hear them dismiss their inventions under arguments such as these: “We’re using the same tools as everyone else,” “Augmenting data for the training set is well known,” “A similar thing has been done for car-bumper design” (said by the designer of a churro-making machine), “Configuring the neural-network hyperparameters is trivial,” and worst of all, “It’s obvious.”

Data scientists often believe that their accomplishments are not patentable, but in-depth exploration of their work often uncovers patentable ideas. I am referring to data scientists that use machine-learning (ML) tools to uncover intrinsic relationships within a large corpus of data. Other data scientists design and improve these ML tools, and their work may also result in patentable ideas, which is a topic for discussing another day.

Getting Down to the Details

My challenges as a patent drafter include extracting details from inventors’ ideas and explaining that a well-described technical solution may result in a patent if nobody else has previously disclosed it publicly. Fortunately, getting details from inventors is easy, as data scientists are usually delighted with the possibility of having their names on patents.

Under U.S. law, an invention is patentable if it is a process, machine, manufacture, or composition of matter that is new, useful, non-obvious, and covers patent-eligible subject matter. Today of course, patent-eligibility is usually the biggest challenge for software patents. It is straightforward to show how an invention is new and non-obvious by proving that nobody else has publicly described the invention before. Almost every invention is useful to some extent, so describing a practical application of the invention is enough. However, U.S. patent law has suffered major changes over recent years with respect to patent eligibility, not because Congress has passed new laws, but because the Courts have decided to impose subjective criteria on the inventiveness of new ideas. At a high level, some of the keys to overcome the patent-eligible hurdle are to emphasize the practicality of the invention and to show comprehensive technical details proving that the invention is more than a basic abstract concept.

Making Machine-Learning Patent Eligible

The general patentability factors also apply to ML. Novelty and non-obviousness mean that nobody else has publicly disclosed the invention previously, by itself or in combination with other inventions, which is relatively easy to determine. It is worth noting that although somebody else may have invented a certain solution to a problem, a new and different solution to that same problem may also be patentable, even if both solutions use ML. For example, suppose a patent application describes how to use ML to categorize whether an animal in an image is a dog or a cat. A new invention that does the same thing may be patentable if it uses ML in a different way, such as using a different training set, representing the data in a different format that enables faster recognition or improved accuracy, improving the training process (e.g., reducing the training process from days to hours), or developing a better neural network.

Novelty in ML may arise in any of the multiple phases of the model-making process, such as gathering and preparing the training data, selecting the training data from a large corpus, identifying the features used by the ML algorithm, defining feature representation (e.g., vector concatenation or some other vector combination, eliminating empty vector fields), conditioning the training set (e.g., dimension reduction) to accelerate training or improve accuracy, enlarging the training set (ML algorithms are data hungry and data capture can be expensive in some applications), speeding up the training process with specially configured hardware, devising better-predicting models, or tuning hyperparameters in a neural network. Additionally, novelty may come from combining multiple models to select the best alternative or to obtain new functionality based on the combinations. Furthermore, ML models may be combined with other methodologies (e.g., rule-based decisions, hierarchical decision trees, distributed systems) to further enhance their capabilities.

Usefulness and patent-eligibility are related because patent-eligibility requires that the invention have a practical application. Therefore, ML patent applications must be drafted with at least one well-described practical example (e.g., faster search, better search, linguistics analysis, or better weather forecasting). Also, as inventors often say, “this is not just for [fill in the blank]; it can be used in many other applications.”  The patent will make clear that the concept may be expanded to other solutions and mention some of those solutions, although these additions do not have to be described in depth. (Of course, if you have the resources, the more you describe in the patent application, the better it will be).

Another way to help with patent-eligibility is to describe technical details of the implementations, which is not too difficult given the technical nature of ML. For example, describing how to vectorize data, combine multiple fields, or perform dimension reduction can assist with patent-eligibility. Data scientists may not give much consideration to these technical details, so it is often up to the patent drafter to request these details to highlight the technical nature of the ML invention.

Getting There First

Time is of the essence when filing for patent protection. More companies are jumping on the artificial intelligence (AI) bandwagon to tap into the tremendous potential generated by ML. The combination of the explosive amount of available data, cheap access to large amounts of computing power, and continuously-improving tools are enhancing the predictive capabilities of AI systems. Data scientists realize that if they are exploring these new capabilities provided by ML, their competitors are probably doing the same.

Many data scientists tend to wait until their solutions are completed, with a prototype up and running, before they reach out to their employer’s legal team with a description of the invention. In the U.S. patent system, where the first one to file a patent application for an invention is the one that is eligible to be granted patent rights, it is important to file your ideas as soon as possible. Even if the implementation is not complete, just conceiving the design of the solution is enough to file a patent application. Companies and data scientists should make sure to put a stake in the ground as soon as possible to set an early priority date before the competition does. It is very frustrating to prosecute a patent application and find out that some close prior art is just days or weeks ahead of your filing date.

Make Sure You’re Holding the Sword

I know that some ML inventions can be obvious, but it is a good business practice to make sure that they are indeed obvious. Data scientists are encouraged to consult with their companies’ legal team, or with an outside patent professional, to check if their inventions can be patented. Patenting ML is important because it gives patent owners the right to exclusive use of the technology, including the right to stop the competition from practicing the invention. If down the road litigation arises for the implementation of ML solutions, whoever holds the patent will have the upper hand in the battle for the exclusive use of the invention. The one holding the patent application will be the one coming to battle with the sword instead of the one desperately searching for a shield.

 

Image Source: Deposit Photos
Image ID: 13469724
Copyright: SergeyNivens 

The Author

Jose Nunez

Jose Nunez is a registered patent attorney at Schwegman Lundberg & Woessner. His practice includes patent prosecution (US and foreign), patent validity, and strategic IP counseling, in a broad range of technical arts, including computer software and hardware, networking, semiconductor manufacturing, network storage, gaming (including virtual and augmented reality, controllers, head-mounted displays), data analysis, machine learning, virtual machines, and security.

For more information or to contact Jose please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. Ternary January 20, 2020 2:22 pm

    When an inventor says “Configuring the neural-network hyperparameters is trivial”, it probably is. Considering the issues around patents, patent eligibility and value of patents, I would suggest not pressuring an inventor to pursue a patent.

    This would certainly apply to independent inventors. Unless the inventor has a sense of having invented a significantly distinguishing feature, I would not rely on the pressure of a self-interested patent attorney to pursue a patent. Waste of time, money and peace-of-mind.

    My experience both with my own inventions and those of others is that there is a significant level of unpredictability on the patentability and patent eligibility of an invention. No matter what an expert tells me.

  2. Jose Nunez January 21, 2020 3:44 pm

    In response to Ternary,
    Thank you for your feedback. I agree that inventors should not file a patent application if there is no invention, but don’t be too quick to dismiss your designs as obvious. If in doubt, you may want to double check with a professional.
    Your comment questions the value of patents, and there I disagree. Patents are valuable to protect inventors’ ideas and enable small and large companies to develop new products and services without someone else coming and misappropriating their inventions.
    A client of mine licenses technology to other companies and he told me that when dealing with large companies contemplating their technology, one of the questions they ask is, “Do you have a patent for this?”
    I think you appreciate the difference between answering yes or no.

  3. Ternary January 21, 2020 8:16 pm

    Jose, I respectfully disagree. The value of a patent for an independent inventor has almost completely disappeared. Especially in the field of computer implemented inventions (which includes data science oriented inventions) there is little chance for an independent inventor to successfully monetize a patent.

    Monetization of patents for independent inventors has always been iffy, but right now it is close to non-existent. Philosophically I agree with you that a patent “should protect” the interests of an inventor. Practically we appear to have passed that point with Alice and the PTAB in combination.

    There are currently so many barriers, as discussed often on this site, that it seems to become a fool’s errant to pursue a patent for an independent inventor.

    About 10 years ago it was accepted practice among my colleagues that in case of infringement there was a better than 50% chance to invalidate a patent during litigation. That chance has increased dramatically since then. The opportunity to assert a patent and obtain money has become minuscule.

    Those same colleagues generally were convinced that there is a better than 50% chance to obtain a patent on an application. And advised inventors accordingly. And from their perspective, they were correct. If you loaded the spec and were willing to amend the claims, there was a good chance to get a patent.

    I am pro patent, really I am. But nowadays, I would not try to convince an independent inventor to pursue a patent, especially not when that inventor declares aspects of the invention “trivial.” That is a red flag! If an independent inventor her/him-self is not convinced that there is a valuable invention, a patent attorney should not try to convince the inventor to pursue. In fact, I believe a patent attorney should push back to an inventor and let the inventor convince you that something of value is there. If not, the whole exercise is doomed.

    A situation is probably different for corporate inventors. For independent inventors your advice seems not to be a sound one, in the current situation.

  4. Atraz January 23, 2020 9:03 am

    Ternary – in general I agree with you (as always), and share the overall sentiment that patenting as an independent inventor is becoming increasingly meaningless, especially in the US (I am working within the EP area myself).

    I also agree that a patent attorney’s role should be to push back and make the inventor explain why something is valuable. However, I also believe that Jose’s argument has some merit, i.e. that inventors may gloss over inventions just because they wrongly believe they are obvious. In these cases, my preferred way of doing it is basically flipping the methodology, and instead of having the inventor explain why it is valuable, make them explain why the invention is obvious. Then I can look at the arguments with patent glasses on, and we can come to a conclusion together.

    Admittedly, in a majority of these cases, the inventor is right, but I have had some occasions where such discussions have led to successful (in terms of both patentability and commercial success) patent applications despite the inventor’s initial belief being that it wasn’t patentable. To be fair though, these were cases of small startup companies and not independent inventors, and even if that is at least similar to independent inventors I realize that it may invalidate my entire argument…

    Also, just a bit of a disclaimer – I do NOT advocate patenting something just because it’s patentable, the business side of things always need to be considered, this goes for both independent inventors and larger corporations (although the ways of determining this differ).

  5. Ternary January 23, 2020 9:51 pm

    Atraz, if you have enough money, go for it. I agree that based on the specification having enough aspects, you can probably get a patent. I have worked with companies where we did in depth prior art searches and adjusted the specification and the claims based on what we found. The company wanted to have distinguishing patents against formidable competition.

    We actually trained them in 103 rejections and they had a keen appreciation for combining references to predict possible obviousness rejections. However, these type of clients are the exception. The costs are just too high.

    Furthermore, novice independent inventors (and I was one of them) have an almost complete lack of understanding of Office Actions. Furthermore, most of them are in love with their invention (“I have never seen anything like it,” are the words we have all heard from inventors.) The clever ones either learn fast or give up fast. And some never get it.

    Based on that, and the lack of the value of patents in the US I would advise especially independent inventors with limited means to carefully consider if it is worth it to pursue a patent. Nobody is waiting for your invention. And if you make it through the USPTO and catch an infringer there is a considerable and real chance that your patent will be held invalid.

    You (and Jose) are probably right in one aspect, and that is about what engineers generally call obvious. Obvious to an engineer like me means logically or naturally following from general practice and theory. Doing what engineers are trained to do. That is not 103 obviousness, though Courts and Examiners try to introduce this as common sense.

    Patents in Europe are meant to be for corporations and institutions, where there is a push to convince small business to innovate and obtain patents. With the exception of the UK, there is almost no support for independent inventors to obtain a patent. There are many subsidies and programs to start a business, even for innovation, but patent applications and prosecution (which is very expensive in Europe) is generally not included.

    This trend towards “corporatization” is taking hold in the US also, unfortunately. The system has become cost prohibitive for the independent inventor in the US (mainly due to all sorts of post-issuance measures) and is now becoming a corporate/institutional oriented system, like in Europe.

    This puts an extraordinarily big responsibility on patent attorneys/agents in advising independent inventors. While an attorney may see an opportunity to get a patent, when an independent inventor has doubts, let it go.

  6. Atraz January 24, 2020 4:01 am

    Ternary – I believe we are in complete agreement. The cases I was talking about (which I probably should have clarified) was where the inventor would see a patent as highly desirable from a business perspective, but wrongfully believing that the patent would never get granted due to the exact way of reasoning you describe above, i.e. because it is obvious to them (but not according to patent law).

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