"Though insight can be gained with mirrored claims, more insight should be available to the patent practitioner when the examiner examines more claims with unique claim scope. While working as a patent examiner at the U.S. Patent and Trademark Office (USPTO) in Art Unit 2121 (artificial intelligence, or AI) I noticed that the typical patent application that I examined had seven method claims, seven apparatus claims, and six computer-readable medium (CRM) claims."
"With increasing the number of claims that have unique claim scope, more aspects of the invention can be examined for patentability. By drafting claims with varying scope in the initial filing, more patentable subject matter can be explored from both the high-level broad description to the implementation details in the initial patent application examination. Having more claims with varying scope should increase the chances of receiving allowable subject matter in the first office action."
Typical AI patent applications include seven method claims, seven apparatus claims, and six computer-readable medium claims, with many claims mirroring each other. Mirrored claims reduce the number of unique claim scopes that examiners must assess, allowing an examiner to reject an application by finding prior art against only seven unique claims. Filing more initial claims with unique scope enables examination of additional invention aspects, from broad concepts to implementation details, increasing avenues to identify patentable subject matter. Having more claims with varying scope increases the likelihood of obtaining allowable subject matter in the first office action. Best practice still requires multiple statutory categories by allowance for enforceability.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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