Brett Trout
If your AI patent application stops at “we used machine learning to solve X,” you’re already losing. The Federal Circuit’s recent Recentive v. Fox decision has set a clear precedent—generic applications of AI won’t cut it. What the courts want now is a technological blueprint: a narrative that spells out the detailed how—not just the what—behind your invention. Here’s how to build it.
What the Recentive Case Taught Us
In Recentive v. Fox, the Federal Circuit made one thing plain: using machine learning to do something in a new environment isn’t enough to warrant a patent. Recentive’s patents covered using AI to generate TV schedules and network maps. They even trained models on historical data. But what did the court see? Nothing more than an abstract idea dressed up in AI terminology.
The reason? The patents didn’t show how the AI technology improved anything. They just described outcomes (better scheduling, smarter maps) without any explanation of how the algorithms or computing processes were improved.
So, how do you avoid Recentive’s fate? By building a clear, step-by-step roadmap for the patent examiner to follow.
Step-by-Step: Drafting an AI Patent Application After Recentive
1. Identify the Technological Problem
Begin by clearly defining the specific technological problem your AI invention addresses. Articulate a specific existing technological issue that your invention aims to solve. This problem should be rooted in technology, not merely a business or administrative challenge.
Example: “Existing data compression algorithms fail to efficiently handle real-time video streams, leading to latency issues in live broadcasts.”
2. Detail the Specific Technological Solution
Describe how your AI invention provides a technological solution to the identified technological problem. This includes outlining the specific AI techniques, algorithms, or system architectures employed. Demonstrate how the invention applies these techniques in a novel and non-conventional manner. Do not simply present the technological solution, instead provide a detailed step-by-step analysis of exactly how your particular invention achieves that technological solution.
Example: “The invention uses a hybrid neural network combining convolutional and recurrent layers to predict and compress video frames in real-time, reducing latency by 30% compared to existing methods.”
3. Demonstrate Practical Application
Ensure that your claims illustrate a practical application of the AI technology. Show that the invention goes beyond an abstract idea by applying the AI techniques to achieve a tangible result or improvement in a specific field.
Example: “The AI-driven compression system is implemented in live streaming platforms, enabling smoother broadcasts with reduced buffering for end-users.”
4. Avoid Overly Broad or Abstract Claims
Craft your patent claims to be specific and grounded in the technological details of your invention. Don’t use generic or overly broad language that might render the claims abstract. Instead, focus on the particularities of your AI model, data processing methods, and system implementations.
Example: Instead of claiming “an AI system for data processing,” specify “an AI system employing a transformer-based architecture for real-time natural language translation on mobile devices.”
5. Provide Detailed Descriptions and Examples
Include comprehensive descriptions and, if possible, examples that illustrate how your AI invention operates. Opt for detailed disclosures demonstrating the invention’s practical application and technological merits. Use terms the patent examiner can recognize as more than fluff—“vector embeddings weighted by historical anomaly patterns” has a better chance of surviving scrutiny than “analyzed the data.” Create a detailed technological “roadmap” for the patent examiner to follow, guiding them from the specific technological problem to your specific technological solution.
Example: “The system processes input text through tokenization, applies positional encoding, and utilizes multi-head attention mechanisms to generate accurate translations, as demonstrated in the providExample: “The system processes input text through tokenization, applies positional encoding, and utilizes multi-head attention mechanisms to generate accurate translations, as demonstrated in the provided use-case scenarios.”
These steps, outlined in greater detail in the Patent Office’s 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, enhance your AI patent application’s chances of meeting subject matter eligibility requirements. This structured approach not only clarifies the technological aspects of your invention but also demonstrates its practical applicability, both of which are critical for successful patent prosecution after Recentive.
Bottom Line: Treat the Recentive Case Like a Checklist
The key takeaway from Recentive v. Fox is that AI inventions must disclose a specific technological solution to a specific technological problem and not just spew technical buzzwords that mean nothing more than “Use AI to…”. Treat this ruling as a roadmap—not a roadblock.
When you draft your AI patent application, assume the examiner (and later, a court) will ask: “What about this invention could not have been done before, and how exactly is it done now?” If your patent answers that question clearly, you’re on the right track.
Recent Comments