Bioinformatics – Eligibility Challenges for Inventions at the Intersection Of Biology and Software: Part 2 | Kilpatrick Townsend & Stockton LLP

(Part 2 of a 4 part series)

The application of innovative data-driven approaches such as bioinformatics and artificial intelligence to the life sciences sector has resulted in a change in the way biological inventions can be protected through patent laws. This 4-part series explores the eligibility challenges of submitting and tracking data-driven innovation and offers practical tips for overcoming some of these challenges.

Describe improvements in the workings of the computer itself or another technology or technical field

  • Identify specific industries or applications in which the invention may be particularly useful, and describe the invention’s improvements relative to existing systems and processes in each industry or application.
    • Drafting the patent application requires a clear strategy, reinforced by a technical understanding of the invention and the industries or applications in which the invention will be used. You must be able to explain not only how the invention works in detail, but also why the invention was conceived and why it improves existing systems and processes.
      • Conduct a patentability search to ensure that each technological improvement you identify is well defined and to ensure you understand the technical contribution of the invention.
    • In the patent application, describe the technological problems associated with the existing systems and processes. Then describe how the invention provides a technical solution to and improves on the problems associated with the existing systems and processes. Be sure to link to specific claim recitations that cover the technological improvements. When explaining specific features/elements of the invention, in the detailed description, reiterate the technological improvements achieved by each feature/element and explain how each feature/element works to achieve the technological improvements.
  • Describe any improvements in computer functionality achieved by the claimed invention – goes well with a number of federal court cases. Enfish, LLC v Microsoft Corp.822 F.3d 1327 (Bund. Circ. 2016); McRO, Inc. v Bandai Namco Games Am. inc837 F.3d 1299 (Bund. Circ. 2016); Visual Memory LLC v NVIDIA Corp.867 F.3d 1253 (Bund. Circ. 2017); Data Engine Technician. LLC vs. Google LLC906 F.3d 999 (Bund. Circ. 2018); Uniloc USA, Inc. v LG Elecs. United States, Inc.957 F.3d 1303 (Bund. Circ. 2020)).
    • This can be done by providing in the description a technical description of how the invention improves computer functionality and providing a clear link between the language of the claims and the improvement in computer functionality.
      • Be especially careful to provide claim features that target the elements that create the improvement. For example, incorporate hardware or specialized computing devices that provide the enhancement into the claims steps.
      • Avoid reciting the claim features at a high level or in general, which loses the connection between the features and the improvement.
    • For example, describe any improvements to the specific structure of a server or data storage device that stores data in use (e.g. reduced memory usage), a distributed network architecture (e.g. faster network communication), speed or efficiency of the underlying computing device such as a user interface , security, model architecture (e.g., choice of a particular model for a particular hardware implementation that results in an improvement in how the computer works), training system (e.g., a data processor that augments training data in an automated system). way), method of programming or designing software, etc.
    • Be careful not to combine an invention’s ability to improve computer functionality itself with a generic computer’s ability to improve an abstract idea or basic practice. Customedia Techs., LLC v Dish Network Corp.951 F.3d 1359 (Bund. Circ. 2020).
  • Describe any improvements in another technology or technical area. McRO, Inc.837 F.3d 1299; Amdocs (Isr.) Ltd. v Openet Telecom, Inc.841 F.3d 1288 (Bund. Circ. 2016); XY, LLC v. Trans Ova Genetics, LC968 F.3d 1323 (Bund. Circ. 2020), in custody #17-cv-00944-WJM-NYW, 2021 WL 5564664 (D. Colo. 29 Nov 2021); CardioNet, LLC v InfoBionic, Inc.955 F.3d 1359 (Federal Circ. 2020), cert. denied, 141 S.Ct. 1266 (2021).
    • As above, this can be done by providing in the description a technical description of how the invention improves another technology or technical field and providing a clear link between the claim wording and the improvement in another technology or technical field .
      • In some cases, this can be done by describing how the invention improves another technology or technical field through a practical application of the algorithm recited in the claims.
      • Claims about artificial intelligence and bioinformatics may be made with items or a combination of items that reflect an improvement specific to artificial intelligence or bioinformatics technology.
    • For example, describe how the invention integrates a traditional biotechnological process into a new field such as the Internet, how a computer-aided method can be used to operate a device in an improved way, or can be used to generate new or improved data, or improve the previous way an algorithm improves a technical area such as variant calling or prediction, improvements in methods of collecting training data or using the collected data in training a model, reducing a number of required model parameters, improving inference accuracy (not just an improvement in the math leading to a better answer), allowing use of a larger corpus of training data, increasing training efficiency on a smaller corpus of data, etc.