Tips & Tricks when Patenting your AI Software

AI Patents are strong assets for startups, but applying for a patent seems like a daunting task. In this article, Alexander Ilic (ETH AI Center), Dr.-Ing Uwe Fischer (Fischer Patent), Tina Kluewer (K.I.E.Z), Dr. Rasmus Rothe and Henry Schröder (AI Venture Studio Merantix)  share some best practices and quick tips on how to best tackle the patenting process.

Play offense, not defense

When filing for patents there are certain approaches that might seem counter-intuitive and inefficient at first but are reasonable at closer inspection:

‍File early, file regularly, file effortlessly
After companies have decided that patenting makes sense in their case, speed and range are essential. The first-to-file principle matters. Whoever was first in filing has a very high likelihood of getting the right. Therefore, it makes sense to invest the time and money early on to file within the first weeks of the start-up and do so repeatedly for every new idea and also do so globally from day one. As the US patent office is still the quickest and leading global gatekeeper, go for them first and don’t wait on the EU counterpart to respond before filing. If done correctly and with a bit of experience the necessary administrative tasks from the company's side are minimal and effortless (less than a day’s work).

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Do not search for other patents
While it might seem intuitive to search for competitors' patents before filing one’s own, this solely increases the overall cost to the company in the long term. Better, let the patent office do the work. See it as a subsidised market research. The patent office either way has to do a comprehensive patent search to verify the novelty of the registered patent - the company saves a lot of money and time in not having to do this market search. Furthermore, some jurisdictions like the US require the disclosure of known prior art. So the results of your own previous research may make the examination procedure more difficult. While it might seem intriguing to see the probability of success of a patent beforehand, there are enough tweaks that can be undertaken to make sure the patent is not rejected on the basis of similarity.

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Freedom-to-Operate reports are a waste of time
A Freedom-to-Operate (FTO) report identifies whether a product can be used without infringing another party's valid intellectual property rights. External FTO analyses are usually very costly. Therefore, a careful pre-evaluation should be carried out in order to determine the exact scope and the necessary extent of an intended FTO-analysis. Often, an internal research may turn out to be sufficient. At least, a thorough pre-evaluation is mandatory to avoid excessive FTO costs as the output is often highly conjectural. Keep in mind that regardless of the effort you devote to your FTO-analysis, there always remains a risk of infringement.

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Patent often and specifically 
From a financial point of view it seems reasonable to claim an idea as broadly as possible. However, as the broadness of a patent claim increases, this simultaneously decreases the probability of acceptance through the patent office. Furthermore, broader claims might trigger attacks (nullity or opposition procedures) even by non competing companies. Also, broader claims leave a much larger target surface for any attack. And if a single part of a patent is ruled to be unpatentable, the entire patent may be endangered. Therefore, rather file often, with more precision (more depth in the claims), delivering a higher defensibility and higher probability of success of adoption by the patent office.

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Everything you do is marketing
From a technical point of view, patents are legal documents that prove the innovation of a company. However, in a more practical sense, especially for start-ups, they are marketing tools. Use them as such. When applying for patents, give it an investor friendly title, while not limiting the claims by the title. The title of a patent must in some sense reflect the technical innovation, however, can again be framed in a way that sounds much more attractive to investors. Anytime you present your product to investors, highlight that you have patented it. Only so often people will fully dig in and understand which technical aspects you actually have patented - but at the same time trust the product more and value it higher.  

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One thing to keep in mind:
The pre-publication problem. If the content of an invention is published before the patent application - it can no longer be patented (in the USA there is a one year grace period). The feature of novelty is missing.

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As we discussed in the previous article, AI is definitely patentable, worth aiming for and better started yesterday than today. In case you run into questions, watch out for events around this topic at the AI Campus Berlin or exchange with our community there.

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