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PatentNext is moderated by Ryan N. Phelan, a registered U.S. Patent Attorney and Software and Computer Engineer. Ryan previously worked in the IT industry as…

PatentNext is moderated by Ryan N. Phelan, a registered U.S. Patent Attorney and Software and Computer Engineer. Ryan previously worked in the IT industry as a consultant at Accenture, where he regularly consulted Fortune 500 companies in software and computing technologies. Ryan is featured in the IAM Strategy 300 & 300 Global Leaders guides, and was selected for inclusion in The Best Lawyers in America© list in the practice area of Patent Law. Ryan is also an adjunct professor at Northwestern University’s Pritzker School of Law where he teaches coursework on Patenting Software Inventions. Learn more about Ryan.

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PatentNext Takeway: Ex parte Desjardins—and especially the USPTO’s decision to make it precedential—appears to be shifting examination away from § 101 and toward § 112 written-description scrutiny, particularly for AI-related inventions. For AI-related inventions, a central takeaway is that practitioners should expect more examiner demands for concrete disclosure of how an AI model is trained, what inputs and outputs are used, how preprocessing and post-processing occur, and how inference or agentic workflows actually operate. Prosecution data and a recent office action example also suggest that written-description rejections are increasing both overall and in AI applications. The practical implication is that patent applicants should not rely on high-level “black box” AI descriptions, but instead should draft specifications with enough technical detail to demonstrate possession of the claimed invention.

About

PatentNext is moderated by Ryan N. Phelan, a registered U.S. Patent Attorney and Software and Computer Engineer. Ryan previously worked in the IT industry as…

PatentNext is moderated by Ryan N. Phelan, a registered U.S. Patent Attorney and Software and Computer Engineer. Ryan previously worked in the IT industry as a consultant at Accenture, where he regularly consulted Fortune 500 companies in software and computing technologies. Ryan is featured in the IAM Strategy 300 & 300 Global Leaders guides, and was selected for inclusion in The Best Lawyers in America© list in the practice area of Patent Law. Ryan is also an adjunct professor at Northwestern University’s Pritzker School of Law where he teaches coursework on Patenting Software Inventions. Learn more about Ryan.

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