Effective IP strategy should always adapt to a changing world. With the development of new technologies such as generative AI, it is important for patent owners and applicants to understand how to best protect their intellectual property as new issues arise. Panitch Schwarze partner Jeffrey W. Gluck, Ph.D. discussed these concerns in an interview with IAM, which has named him among the world’s leading intellectual property strategists in IAM Strategy 300 Global Leaders for 2024.
Gluck also addressed the need for change in the United States Patent and Trademark Office’s handling of software-related inventions and algorithms. “There is inconsistency among examiners and supervisors on what constitutes patent-eligible subject matter,” he said. “As long as neither Congress nor the courts clarify the law of patent-eligibility, uncertainty will remain, but it is possible that one of these bodies may take action.”
Gluck identified important considerations when pursuing patents: “For patent applicants, the strategy is to try to anticipate developing technologies that might use their inventions. They can do this by broadly disclosing and claiming the subject matter so that resulting patents may be applicable to these developing technologies, in addition to targeting the intended use.”
He also cautions inventors to be careful in their use of generative AI. “There are major copyright questions that have not yet been resolved (e.g., regarding use of copyrighted training data and the IP status of the output),” he said. “I warn my clients to be extremely wary of using generative AI as a professional tool for generating new works of authorship, software or new technologies.”