B. Todd Patterson, Partner

Case Studies

World Energy Systems, Inc. – Patent Portfolio Development

oil rig picture

Patterson + Sheridan has secured numerous patents for World Energy Systems, Inc., a developer of enhanced oil & gas recovery technologies. During this process, we  developed an in-depth knowledge of the company’s key technologies, markets, and competitive landscape and came to understand its business goals, including the company’s long-term plan to secure a major private funding partner.

Then, we proactively worked with World Energy Systems, Inc., to develop a robust patent strategy that includes identifying and developing key technologies, obtaining domestic and international protection of these key technologies, and avoiding third-party patent disputes. The portfolio now comprises numerous patents and pending patent applications in countries throughout the world. World Energy Systems, Inc. has also secured a key business relationship for obtaining potential funding partners.

Drafting and Filing Five Patent Applications in Five Days

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One of our large Fortune 500 clients came to us with a unique problem — a new product was shipping in a week and not a single patent had been prepared or filed for this invention. Our team quickly responded by traveling to the client’s office to collaborate with the inventors and in-house counsel. The technical expertise of our IP attorneys made it easy to get up to speed on the complexities of this unique technology and devise a patent strategy with a clear understanding of the client’s objectives.

Between the initial draft, review by inventors and in-house counsel and revisions, writing one patent application usually takes about two to three months and more than 20 hours. Our team tenaciously worked to complete five applications in less than one week. All five applications were turned into patents and since that time, foreign patents have also been filed. The product shipped on schedule and fully protected.

Maximizing Patent Value Through Scaling Up Process

A large state university approached us about an important process for carbon dioxide capture it had developed. The inventors were scheduled to present the technology at a conference within a few weeks, and potential licensees were already inquiring about the technology. It was imperative the client get the patent prior to the conference and before negotiating any licenses.

While interviewing the client, it became clear the proof of principle for the technology involved small scale laboratory practice. Foreseeing that potential licensees might want to scale up the process, we worked alongside the client to explore the methodology and equipment that would be involved in scaling up the process from the laboratory practice to commercial application.

The resulting patent, covering both the laboratory and commercial aspects, was more valuable to the client as part of its overall portfolio and as licensable technology. Even with the additional work, we had the patent application filed prior to the client’s conference deadline.

Protecting AI-Based Inventions Despite Recent Legal Hurdles

The next wave in technological advancement

Artificial intelligence (AI) is redefining the next technological age. It’s estimated that 38 percent of all businesses are implementing AI in some form, and that adoption rate is expected to increase to 62 percent in 2018. Plus, global revenue from AI-based systems is forecasted to grow from nearly $8 billion in 2016 to more than $47 billion in 2020.

Interest in protecting these inventions is skyrocketing as well. From 2012 to 2017, the USPTO saw a 500-percent increase in the number of patents issuing to class 706 — a classification exclusively designated for AI. But how do you ensure this emerging technology is protected properly?

Overcoming legal hurdles with tailored, detailed patents

Despite recent hurdles put in place by the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, AI-based inventions can be protected if you have a knowledgeable, experienced IP legal team focused on this developing market.

At Patterson + Sheridan, we protect AI-based technology by drafting strong patents tailored for these unique inventions. For example, new applications should specifically address the technical problem and technical solution. This is critical to overcome the “significantly more” hurdle in Alice.

Also, when describing the invention in the application, it is crucial to be means-oriented, not only ends-oriented. We avoid the “black box” logic of “input data, processing data, output data,” and instead, provide practical implementation details, such as specifics of the model design. It’s also important to include claim elements that recite specific uses of resulting data, not just the generation of the data.

The right patent attorney makes all the difference

Some are already referring to AI as the “Fourth Industrial Revolution.” This is a pivotal time for software and technology companies who are pioneering in this space — safeguarding those inventions is crucial. Like the revolutionaries who have come before, the leading innovators of this coming revolution should continue to pursue protection of their AI-based intellectual property.

The IP lawyers at Patterson + Sheridan understand the unique challenges of protecting AI technology, and clients appreciate our relentless, hands-on approach. For more of our detailed insights into this topic, read "Smart Strategies for Protecting AI-Based Inventions."