The AI Patent Team Alice Built Shares Its Prosecution Secrets

About this episode

Eli Mazour and Ngai Zhang discuss innovative strategies for patent prosecution in the post-Alice era and the role of AI in their practice.

When Alice came down in 2014, much of the patent prosecution bar reacted with denial. Most practitioners hoped the USPTO, the Federal Circuit, or Congress would clean things up — and that adding some magic language to claims and specifications would eventually be enough. Eli Mazour and Ngai Zhang, separately, came to a different conclusion: there had to be a new, better way to obtain strong patents in the post- Alice world. They started comparing notes more than a decade ago, eventually converged on a shared approach, and now implement these strategies together at Foley & Lardner. On this episode of Clause 8, Eli and Ngai walk through what they actually do — their unique strategies for avoiding and overcoming Section 101 issues, why it's difficult for other attorneys to implement these strategies, and how they think their practice will be impacted in the age of AI. In this episode: * Why relying only on art unit prediction tools & wordsmithing is a losing strategy for § 101 * Why claim 1 shouldn’t be your broadest claim * How taking features out of independent claims helps advance prosecution - and how the strategy also leaves clients routinely surprised by how broad their issued…

People in this episode

Host: Eli Mazour

Guest: Ngai Zhang

Topics covered

• patent prosecution
• AI in patent law
• Section 101 issues
• claim strategies
• examiner interviews
• collaboration in patent drafting

Keywords

• patent prosecution
• Alice
• Section 101
• claim strategies
• examiner interviews
• AI collaboration
• Foley & Lardner

Mentioned in this episode

Organizations: Foley & Lardner

Books & works: Never Split the Difference

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