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Analysis of Examination Standards and Case Law for AI and Software-Related Inventions

I am very honored to announce that I have had the opportunity to write a book in Japanese, which has been published.

The book covers patent examination of computer-implemented inventions (CIIs), including AI, by the Japan Patent Office (JPO), the European Patent Office (EPO), and the United States Patent and Trademark Office (USPTO).

This book is based on a training session I conducted for the Japan Patent Attorneys Association titled “Analysis of Examination Standards and Case Law for AI-Related Inventions in Japan, the U.S., and Europe, and Feedback on Application Drafting.”

The session received many positive reviews and a great deal of feedback. This book incorporates that feedback and includes additional explanations and case studies to expand on the training content.

In writing this book, I made a point to include numerous case studies to help readers visualize how to apply the concepts in the practical drafting of patent applications.

Applicants familiar with JPO examination may find that CII examinations at the EPO and USPTO present a higher hurdle compared to those at the JPO. Therefore, as preparation for the examinations at the EPO or USPTO, applicants may want to know what should be included in their Japanese priority applications.

Applicants familiar with EPO and USPTO examinations may find that the JPO’s examination regarding CII presents a lower hurdle compared to those of the EPO and USPTO. Therefore, applicants may wish to know the extent to which broad claims are accepted under the JPO’s examination guidelines.

One point to note in particular is that, given the requirements for amendments, applicants need to be aware of the differences in examination practice between patent offices not just during the examination stage, but from the very beginning of drafting the application documents.

I would be delighted if the information provided in this book, including the points mentioned above, is useful to those responsible for CII patent application practice.

Please click here for more information.

Our blog contributions shall provide an overview with regard to legal topics, legislation and case law and are supposed to provide some general information rather than constituting any specific advice. Please do not hesitate to contact Maiwald and in particular the authors of the particular contributions if have any questions on the addressed topics or on other legal issues.

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