Applications of Gen-AI in European Patent Prosecution
AI tools have the potential to streamline the entire European patent prosecution process, from filing to grant, and for both the patent attorney and the patent office. These tools can assist in several key areas:
1. Reviewing and Summarising Prior Art
Understanding the relevance of prior art and the interplay between prior art documents is a task that has historically been very burdensome for patent attorneys, but it is a necessity for formulating effective arguments for novelty and inventive step.
Generative AI tools can automate or augment this process by summarising key aspects of the prior art, picking up on particular disclosure and teachings in separate prior art documents, and highlighting the differences between the cited references and the claimed invention. Providing this information to patent attorneys quickly and accurately allows them to focus more of their time on their arguments against specific objections.
2. Proposing Claim Amendments
It is more often than not that amendments to the claims are required during prosecution in order to overcome objections from the EPO. When making amendments, patent attorneys usually attempt to overcome objections with amendments in a manner that limits the claims as little as possible relative to their original position.
Generative AI tools can assist in this area by quickly and accurately highlighting and extracting wording from the specification that may address the Examiner’s concerns, while preserving the desired scope of the invention. Moreover, AI tools can provide multiple options for amendment, providing the patent attorney with a selection of possible strategies that may be of use to the applicant.
By analysing previous amendments and their outcomes, in the file-wrapper or otherwise, AI tools can also suggest modifications that have a higher likelihood of being accepted by the examiner. This can be particularly valuable for complex inventions or when dealing with unfamiliar areas of technology or Examiners.
3. Responding to Objections
In tandem with considering amendment options, a critical part of prosecution is addressing objections set out by the EPO. Objections can be raised on various grounds including novelty, inventive step, added subject matter, or non-patentable subject matter, for example. Crafting a persuasive response requires a deep understanding of patent law, as well as the ability to construct a logical and well-supported argument that addresses the examiner’s concerns.
Generative AI tools can significantly aid in this process by analysing the examiner’s rejection, identifying relevant case law, and generating draft responses that align with established legal principles. If the amendment strategy is already decided, the AI can analyse the amendments to tailor the arguments to the specific claim features introduced in the amendments.
For example, when considering inventive step, AI tools can be used to draft a problem-solution approach argument framework on the basis of one or more specific claim features and combinations of prior art documents. Such a framework can serve as a starting point for patent attorneys, who can then refine and adapt the content according to best practices. This approach not only saves time but also ensures that the response is grounded in solid legal reasoning.
4. Automating Legal Research
Legal research is a foundational element of any response to an EPO office action, whether it’s finding relevant case law or simply adhering to EPO guidelines for examination, attorneys regularly have to spend time looking up relevant law. This is usually a relatively arduous, time-consuming task (particularly when you know case law exists but fail to recall any of its details).
Fortunately, Generative AI tools excel at automating this research process. Indeed, AI is capable of scanning multiple legal databases, guidelines, and case law very quickly. AI can identify relevant precedents, interpret statutory language, and provide insights into how similar cases have been handled in the past. This not only speeds up the research phase but also ensures that the response is backed by the most relevant and up-to-date legal information.
As such, AI tools can be used throughout the process of responding to a European office action, and are equally applicable to use at search and in preparation for Oral Proceedings.
Use of AI at the EPO
The use of AI is not only beneficial to patent attorneys during prosecution, but also the patent office itself, and particularly with Examiner workflows during prosecution.
In 2019 the EPO created a dedicated Data Science team in a concerted effort to apply artificial intelligence and machine learning technologies to realise similar efficiency and accuracy benefits for its Examiners. Since then, the EPO has released a number of AI tools.
One of these tools is AI-PreSearch, as discussed here. AI-PreSearch utilises a patent-trained language model to embed and search prior art documents in a massive vector space. It is used by Examiners at the EPO to identify relevant documents and citations, filling gaps where traditional methods fall short. The tool was tested and finds 36% of all citations on its own.
Another tool used by the EPO is the EPO's Legal Interactive Platform, as discussed here. This tool is designed to streamline the search and retrieval of applicable law and guidelines to specific matters. It uses a Retrieval Augmented Generation (RAG) framework to provide accurate, context-driven answers to complex legal questions, outperforming traditional search methods. Effectively, the tool can be used to find that relevant needle in the haystack piece of case law in a much more efficient manner.
