🥌 Chris Adams and Frank Bernstein at Squire Patton Boggs just published a creative take on navigating the USPTO's evolving AI patent landscape.
Their piece in The National Law Review, "Sweeping Claims, Sliding Stones: Mastering AI Patent Prosecution with a Curling Twist," draws a surprisingly apt parallel between the popular Winter Olympics sport and the strategic chess match of prosecuting AI inventions — as the authors describe it: "chess match on ice."
Key Takeaways
💻 Consider Technical Substance of Claims, Not Just ML Jargon
The Federal Circuit has been clear, as seen in cases like Recentive Analytics, Inc. v. Fox Corp.: abstract, result-focused language may not hold up under scrutiny. The specification should include sufficient details of how results are achieved, not just that they are.
🎯 Deciding When to Argue Versus Amend
Like a curling skip weighing an offensive or defensive shot, timing and judgment can make a big difference. In some cases, opting for narrower claims and a continuation strategy to build broader protection incrementally might be more effective than pushing for broader ones right away.
🧹 Sweeping to Influence the Result
Like sweeping in curling can "influence a stone's path," careful claim language and well-timed arguments can guide an application to allowance without changing the invention itself. That's the art of prosecution.
🤝 Inventor-Attorney Collaboration Can Be Crucial
Communication gaps might prove as costly in patent prosecution as they are on the ice, so fostering strong teamwork is often key.
As AI patent filings continue to surge, practitioners can thrive by combining technical fluency with strategic adaptability — and perhaps a dash of appreciation for lessons from Olympic team sports.
Read the full article: Sweeping Claims, Sliding Stones: Mastering AI Patent Prosecution with a Curling Twist