On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. During this meeting, panelists from industry and the USPTO provided helpful tips on drafting and prosecuting patent applications that include AI components, including special tips for the biotech industry. Key takeaways from the meeting and published materials will be summarized in our Three-Part Blog Series.

Part One – Helpful Tips for Prosecuting Patents in the Biotechnology Space

Major innovations created in the biotechnology space may encounter issues in identifying patent eligible subject matter during patent prosecution (for example, panelists explained that abstract idea and natural phenomenon-based rejections are relatively common in the art unit for Biotechnology and Organic fields). In one key takeaway, the panel suggested drafting an application with specific details about the innovation in order to support patent eligibility and enablement for the innovative concept.

Other helpful tips from the panel discussion included:

• Focusing on computer architecture or computer-implemented methods, and using defined terms that can be understood and deciphered by the application reader.
• Telling a detailed story explaining the novelty of the invention instead of merely providing a high level description.
• Conducting an examiner interview to help teach the examiner the novelty of the innovation using terms and definitions that are unique to the technology field.

Moderator Charles Boudreau (a Lead Administrative Patent Judge at the USPTO) also walked the panelists through the use of common terms to help improve the examiner’s search for prior art and potentially help PTAB or District Court judges improve their understanding of the technology.