RAPACKE LAW GROUP AI PATENT GUIDE

AI Patent Mastery
For SaaS Founders
This guide provides a practical roadmap for patenting AI
technology, emphasizing essential steps and strategies.
It combines expert insights with a conversational tone,
ensuring clarity while navigating through the patent
application process.

Table Of Content’s

01. 02. 03.

Why Your AI Technology How To Identify Attracting Investor
Needs Patent Protection Novelty In Your AI Capital

Why Patent Protection Evaluating AI Patentability AI and Global GDP Growth

Eligible Subject Matter Value Assessment and Recent Increases In AI

Framework Goal Setting Investments

04. 05. 06.

Preparing Your Patent Overcoming Objections The Patent Process and
Application and Rejections Timeline

Thoughts On Drafting and Strategies to Address Learn About The Steps In

Novelty Objections The Patent Process

Step By Step Guide To Responding to Office Learn About The RLG

Drafting Your Application Actions Guarantee

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Introduction

In today’s fast-paced world of innovation, protecting your artificial intelligence (AI) technology is not just
an option; it’s a necessity. Whether you’re a startup founder, an inventor, or a business strategist, you
know that AI is a game-changer, and securing its unique aspects could very well be the linchpin of your
success. This guide is crafted to demystify the patent application process, providing you with a clear
and concise roadmap to safeguard your innovations.

We get it, the world of patents can be daunting, filled with legal jargon and intricate processes.
But here’s the good news: you don’t have to navigate it alone. This guide is designed to speak your
language, blending a conversational tone with the essential business-focused content you need. We’ll
dive straight into the core of the matter, providing enough background to give you context, while also
laying out actionable steps to ensure your AI technology gets the protection it deserves.

Dive in to uncover a wealth of insights and practical strategies, all designed to guide you seamlessly
through the patenting process for your AI technology. Together, we’ll transform the complexities of
patent applications into clear, actionable steps, ensuring your innovation is primed for success.

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About The Author

Registered Patent Attorney

Andrew Rapacke

Andrew Rapacke Bio

Managing Partner
Navigating the complex world of software and AI patents
requires unique experience, and that’s where Andrew Rapacke
comes in. As the Managing Partner at The Rapacke Law
Group, he combines his legal acumen with a deep technical
Andrew’s mission is to safeguard understanding, honed from his time as a Naval Engineering
your groundbreaking software, Officer and his education at the United States Naval Academy.
ensuring your unique features This unique blend of experiences allows him to navigate the
remain uniquely yours. complex landscape of software patents with ease and precision.

Focused on helping SaaS founders, Andrew is more than just

a legal advisor. He’s a strategic partner, deeply involved in the
startup community and committed to educating others about the
intricacies of intellectual property law. His mission goes beyond
the confines of a traditional law office. It’s about safeguarding
your groundbreaking software and intellectual property, ensuring
your unique features remain uniquely yours.

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RAPACKE LAW GROUP AI PATENT GUIDE

We make protecting your

intellectual property simple.
The RLG Guarantee

2,000+ Patents &

We don’t just take pride in our work, we
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knowing your IP will be secured or you don’t
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Intellectual Property Services

Patents - We are dedicated to securing exclusive

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assisting in trademark registration and handling
opposition and cancellation proceedings.

Business & Corporate Legal Services - We

handle legal matters related to business, allowing
you to focus on growing your startup.

Copyright Registration - We protect the

original aspects of your software by assisting
in copyright registration for elements like the
source code or UI elements.

* Not all services are covered by the RLG guarantee. Prior results do
not guarantee a similar outcome

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RAPACKE LAW GROUP AI PATENT GUIDE

Attorney Advertisement / Disclaimer: Nothing in this guide should be taken as legal advice for any
individual case or situation. This information is not intended to create, and receipt or viewing does not
constitute, an attorney-client relationship. The hiring of a lawyer is an important decision and one that
should not be based solely on advertising.

Chapter 1
Why Your AI Technology Needs
Patent Protection
From ChatGPT and smart indoor farming to speech recognition
technology that decodes baby cries, artificial intelligence (AI) has
redefined the way computers are used to understand human intelligence.

The adoption of AI promises significant benefits across nearly every industry, with increased efficiency,
productivity, and accessibility impressing substantial impacts on a business’s bottom line. AI can reduce
costs, drive optimizations and increase workflow, and predict key business metrics in nearly every
market. For those companies with innovative AI platforms, patent protection may provide you with the
competitive advantage you need to become an industry leader.

From 2002 to 2018, annual AI patent application filings at the United States Patent and Trademark
Office (USPTO) increased by more than 100% to more than 60,000 annually. This increase correlates to
the share of all patent applications that contain AI rising from 9% to nearly 16% of all total U.S. patent
application filings. By 2020, the USPTO had received approximately 80,000 utility patent applications
that involved AI software, a 150% increase since 2002. Whether it is a machine learning algorithm,
which makes up 40% of AI patent application filings, natural language processing, or computer vision, AI
intellectual property (IP) rights stand poised to shake up the business landscape.

The global AI software market is expected to reach $126 billion by 2025, and the number of
organizations adopting AI over the last few years has exploded by 270%. By 2025, an estimated 95%
of customer interactions will be powered by AI, offering businesses that invest in AI technology a
competitive advantage when it comes to intellectual property, productivity, streamlined operations, and
an improved customer experience.

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RAPACKE LAW GROUP AI PATENT GUIDE

As AI technology and intellectual property stand to be one of a business’s most valuable assets moving
forward, there is increased competition in protecting these intelligent systems. How can companies
ensure their inventions are properly safeguarded against competitors? How should organizations
leverage these innovations to drive more growth and revenue? For many businesses, the answer is
protecting their proprietary AI technology with patents. More than 100,000 organizations own patent
portfolios, and for some of the largest tech organizations like Samsung and IBM, patents are incredibly
valuable intellectual property assets.

While AI innovation has become a staple of our daily routines overnight by allowing computers and other
computing devices to recognize patterns and objects and make predictions, the question of whether
elements of AI technology may be patented remains ambiguous. As with any software or computer-
implemented invention, AI inventors must first determine if their AI technology meets the patent
eligibility subject matter framework set out under 35 U.S.C. § 101. These four categories of patentable
subject matter include (1) processes, (2) machines, (3) manufactures, and (4) compositions of matter.
Only “processes,” however, will encompass the potentially patentable features of AI inventions.

Patent applications directed toward AI technology must be comprehensive and implement more than
simply layering AI over a known software process or functionality. AI-based technology must be new,
non-obvious, and provide more simple or obvious improvements to an existing technology. According
to the United States Patent and Trademark Office (USPTO), a patentable technology is a “new and
useful process, machine, manufacture, or composition of matter, or any new and useful improvement.”
Most successful AI patent applications can demonstrate the application of the AI in a specific

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In addition to qualifying as patent-eligible subject matter, your AI invention must also be novel and non-
obvious relative to what is already known in the relevant art. The novelty requirement is satisfied if the
invention has not previously been offered to the public, described in written or published material, or
disclosed anywhere in the world. Non-obviousness is satisfied if, upon examination of the invention, it is
not an obvious combination of elements that would be known by someone “reasonably skilled in the art.”

The patent application must also accurately and thoroughly describe the processes and methods in
your AI platform or machine learning system. To meet the utility criteria, the AI technology must solve a
real-world problem or provide a technical improvement to a known technical deficiency. For example, an
AI solution that could track heart palpitations in cardiac patients or improve an existing computer model
to perform faster and more accurate outputs for diagnosing cardiovascular diseases.

Below is a non-exhaustive list of patentable AI technologies provided by the USPTO:

• Novel pre-processing of model training data. This may include generating unique datasets prior to
training an AI model.
• Novel model training processes. This may include which algorithms are used in a process or
improvements to a machine learning model or neural network algorithm.
• Novel use of trained models. This may include implementing AI to control specific machines or to
provide unique results from known products or methods.
• Improvement to the underlying hardware implementing a trained AI model or algorithm or the
production of a tangible result or object.

In some cases, AI-based technology may include multiple novel processes. Both the United States
Patent and Trademark Office and European Patent Office are constantly updating regulations due to the
boom in AI patent filings. Legal rulings and qualifying innovations are subject to change as patent offices
around the world attempt to keep up with the latest practices and innovations. As more companies
expand across AI-based patent territory, it becomes increasingly important for businesses to apply for
patent protection for their technology.

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RAPACKE LAW GROUP AI PATENT GUIDE

Chapter 2
How To Identify Novelty In Your
While preparing to move forward with a patent application, you must
first determine the following:

• What point(s) of novelty does my AI platform include?

• What is the AI platform’s proprietary process?
• What unique functionality will my AI platform solve or predict?
• What technical improvement over existing technology will my AI platform provide?
• Am I applying AI to a practical application?

If you can adequately answer all these questions, your AI platform or system is likely well on its way
to being considered patentable subject matter. Answering these questions requires an inventor to
understand and articulate how a combination of features works to produce a desired outcome or, in
the case of an algorithm, how a series of steps alone may create a technical improvement over existing
technology.

While contemplating these questions before applying for an AI patent, you should also consider the
following questions:

How valuable is your AI system to your company?

Assessing how much value your AI-based system adds to your company is a practical way to help
determine if patent protection is the right fit for your technology. Pursuing IP rights may not seem a
worthy investment if the AI only yields shorter-term benefits, such as initial traction in the marketplace.
However, if your AI will address a critical market need and serve as the backbone in scaling your startup
and generating long-term revenue, filing for patent protection is a wise investment.

What are the short-term and long-term goals of your company?

Will your AI be rendered obsolete in a few years, or will it achieve market sustainability? During this
preliminary stage, consider how, if a patent was obtained, leveraging your AI patent will allow for both
short-term and long-term monetization goals. In the short term, consider your current market position
and how having a patent can establish an immediate barrier to entry for competitors. Additionally, there
are short-term monetization options, such as licensing agreements, which may be available to you

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RAPACKE LAW GROUP AI PATENT GUIDE

based on your AI patents and intellectual property rights. In the long term, it is imperative to start
planning comprehensive strategies to build, develop, and monetize an AI software patent portfolio that
will enable you to monetize your intellectual property for decades.

Where are you in the development process?

If you are in the preliminary stages of your AI software development, you should consider filing a
provisional patent application. A provisional patent application will provide you with priority over other
inventors and competitors based on your filing date, allowing you to hold your place in line while you
continue to develop and refine the software. Provisional patent applications give you a year of “patent
pending” status, during which you can safely discuss your invention with third parties, including
developers, investors, and potential consumers. So long as you file a non-provisional patent application
before the expiration of the 12-month term and properly claim priority to the provisional patent
application, then your non-provisional patent application gets the benefit of as though it had been filed
on the date of the provisional.

If you are in the later stages of development, you should lean more towards filing a non-provisional
patent application. With the assistance of the Rapacke Law Group (RLG), this process should begin with
conducting a thorough prior art search to determine the patentability of your invention and ascertain
how broadly any claims may be drafted within your application.

Avoid making the following mistakes during this process, as they may make your technology
unpatentable.

• Disclosing your AI invention anywhere in the public domain prior to filing your patent application.
• Conducting a do-it-yourself prior art search without reviewing the results with an RLG patent
attorney.
• Abandoning your patent application because you received an initial office action rejection without
first consulting an RLG patent attorney.

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Chapter 3
Attracting Investor Capital
Investments in AI startups have grown over 6X since 2000, and
global GDP is expected to increase to $15.7 trillion by 2030 in part
due to AI. As of 2022, the global AI market sits at a value of $136.6
billion, and countries around the world are racing to take their place
at the top of the AI leaderboard.

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RAPACKE LAW GROUP AI PATENT GUIDE

With artificial intelligence advancing at such a rapid pace, AI research and development is also taking
center stage for companies across the globe. Currently valued at $86.9 billion, the AI market is expected
to grow to $407 billion by 2027, which would represent a compound annual growth rate of approximately
36%. This growth stems from the ever-increasing adoption of AI technologies in a variety of industry
sectors, including finance, healthcare, retail, and transportation. AI research and development is fueled
by the rising demand for AI applications that can increase productivity, streamline processes, streamline
workflow, and increase employee productivity.

Private investment in AI in 2021 totaled nearly $93.5 billion, more than double the overall private
investment in 2020. The United States led the world in both total private investment in AI software
and AI startup funding. With no signs of slowing, patents and intellectual property protection is a wise
strategy to protect and monetize your proprietary AI technology over the long term.

Create an AI IP Revenue Stream

One of the most effective ways you can monetize your patent(s) is through licensing. A patent license
is an agreement that allows another entity to commercialize and sell your patented AI for an agreed-
upon term creating immediate income for both parties while you retain ownership of the IP. By licensing
your AI invention, you can immediately create recurring revenue for the duration of the agreement while
retaining ownership of the AI invention upon the expiration of the agreement. A patent license may
also provide opportunities to introduce your AI platform to a much larger domestic and international
consumer base. For example, Qualcomm, Nokia, and many other IP giants look to license their patent
and intellectual property portfolios to a variety of global industry leaders through strategic licensing.

Source: FY 2020 U.S. Licensing Survey – AUTM, at 15

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Patent Purchase and Acquisition

In addition to licensing opportunities, patents can be acquired through alternative methods such as a
purchase/sale of a single patent, acquisition of a patent portfolio, mergers and acquisitions of company
IP assets, and joint ventures. Remember that a patent acquisition strategy may apply to an individual
patent or a family of patents related to a specific AI platform or industry.

Regardless of the end goal of any company, acquiring patent protections yields both short-term and
long-term benefits and may provide both offensive and defensive strategies. In the short term, the
inventor would see an immediate financial return and mitigate any future costs that come with potential
litigation or maintenance fees. In the long term, the sale of a successful patent may bring future
licensing or re-sell opportunities for up to 20 years.

The most recent examples can be found in the numerous acquisitions of smaller AI and technology
companies by the Big 4 companies: Amazon, Apple, Google, and Meta. While Amazon once started out
as an online bookstore, it has continuously evolved to expand the scope of its marketplace dominance
by acquiring companies and their related patent and intellectual property portfolios over the past
two decades. For example, Amazon has expanded its home security footprint with the blockbuster
acquisition of both Ring and Blink in 2018. Not only did these companies instantly receive a massive
financial return, but they were able to see their patented products showcased on a global scale.

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Chapter 4
Preparing Your Patent Application
From highlighting the importance of detailing your invention’s unique
aspects to offering practical advice on documentation and strategy,
this section lays the groundwork for a strong patent application,
ensuring your AI innovation is well-protected.

At RLG, we have extensive experience and expertise in preparing AI patent applications, including
drafting a thorough disclosure document outlining the AI system’s processes of use, training dataset
inputs, model training process, and desired output, including the drawings, flowcharts, or wireframes.

Our team of AI patent attorneys has the technical expertise to produce a comprehensive patent
application from scratch based on a disclosure call, even if you do not have any written disclosure or
drawings readily available.

The first step in preparing your AI patent application is to draft a thorough disclosure document outlining
the AI system’s processes of use, dataset inputs, model training process, and desired output, including
any drawings, flowcharts, or wireframes. With the help of the RLG attorneys, we will assist you in
describing and defining all of your AI systems, processes, and components. We will work with you to
best break down your system/method into a series of steps and explain how it both works and solves a
real-world problem.

The second step entails thoroughly describing the AI system’s “point of novelty” that distinguishes its
proprietary features and functionality from other standard systems or comparable technologies that
already exist in the marketplace. Once you have consulted with an RLG attorney on these points of
novelty, a prior art search should be conducted to assess the patentability of your invention and how
broadly any claims in your application should be drafted.

The third step involves conducting a thorough prior art search. An adequate prior art search saves both
time and costs as it may reveal that technology already exists somewhere in the public domain or that
overlapping existing AI systems have already been patented. A detailed prior art search will provide a
roadmap for drafting, including the breadth and scope of potential claims.

During the fourth step, your attorney will ensure that your AI patent application includes 1) claims, 2)
specifications, and 3) drawings that highlight your “points of novelty” of the AI platform.

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Claims
The claims of your AI non-provisional patent application are the most crucial section of your application
and must thoroughly describe the specific processes and methods that make your AI platform novel.
A well-drafted claim will demonstrate a technological improvement with more than just basic data
manipulation. Successful claims will further build on how new novel concepts improve upon previous
comparable AI technologies. At RLG, our attorneys understand how best to draft your application
and avoid language describing generic functionality or merely reciting AI automation that may be
“traditionally performed by human activity.”

I have provided a claim example below from a published AI software patent application that clearly
defines the “metes and bounds” of the AI platform:

“System For Determining Clinical Trial Participation”

A system comprising:
• A processor of a participation probability (PP) node connected to at least one cloud server node
over a network configured to host a machine learning (ML) module;
• A memory on which are stored machine-readable instructions that, when executed by the
processor, cause the processor to: receive a clinical trial (CT) request from a user device, parse
the CT request to derive at least one CT parameter, query a patients’ database based on the at
least one CT parameter to store a set of potential CT participants on a local database, collect
social media activity-related data for each of the potential CT participants from the set, generate a
plurality of feature vectors based on the social media activity-related data for each of the potential
CT participants, and provide the plurality of feature vectors to the ML module for generating a
predictive model indicating a participation probability index (PPI) for each of the potential CT
participants.

Specification
While many patent practitioners focus most of their drafting efforts on the claims, it is crucial to note
the importance of providing a detailed specification that will be invaluable for any future amendments
during the patent prosecution. At RLG, we advise drafting your specification, including a description(s)
of multiple embodiments to ensure that you have ample subject matter support within the application
should we have to amend the claim set in the future or file a continuation application. A robust
specification is both concise and comprehensive in describing the technical and essential components
and best mode of the software invention.

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RAPACKE LAW GROUP AI PATENT GUIDE

A well-drafted specification will clearly highlight your software’s novelty, describe the components and
functionality of your AI platform, and provide enough detail to enable someone of ordinary skill in the
field to make and use the AI system without undue experimentation. Ensure that you describe with
particularity all systems, sub-systems, components, and datasets used to execute your novel AI process
in the specification and detailed description.

Drawings
Your AI patent application drawing figures are not only vital in supporting the claims of your AI invention
but prove invaluable when responding to an office action. If your AI patent application includes generic
hardware components, you should ensure your claims and drawing figures include elements that are
not merely routine or conventional and, if applicable, improve the performance of the AI system. While
the filing requirements for a non-provisional patent application under 35 U.S.C. § 111 only require a
single drawing figure to be submitted with your application, at RLG, our AI patent applications typically
contain a variety of drawing figures that may be used to identify your system, its components, and its
functionality. For example, we recommend at least five AI software patent drawings directed to figures
(i) through (v) below:

(i) Two variations of the network environment where the software may be implemented;
(ii) A main node (i.e., a computer or a server) where the software code is executed;
(iii) A flowchart of a main method executed by the software code;
(iv) A flowchart(s) of additional optional variations of the main method executed by the software code;
and
(v) A diagram of a computer system/server where the computer-readable medium having the executable
code resides in the memory and is executed by the processor of the computer system/server.

Examples of a few of these figures are depicted below:

(i) Network environment where the software may be implemented:

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RAPACKE LAW GROUP AI PATENT GUIDE

(iii) A flowchart of a main method executed by the software’ code (corresponding to the example claim 1
referenced above):

(v) A diagram of a computer system/server where the computer-readable medium having the executable
code resides in the memory and is executed by the processor of the computer system/server:

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Chapter 4
Overcoming Patent Office Objections
and Rejections
Not every AI-based patent application is successful after its initial
application submission. Your patent application may either be
accepted, rejected, or objected to by your USPTO Examiner.

A rejection occurs when the patent claim is considered “unallowable” in light of the prior art or patent
eligibility requirements. An objection occurs when the claim language is deemed indefinite, such as a
typographical error. Patent Examiners will issue a rejection when the issue involves the merits of the
claim, and you can ask for a review of said determination by the Patent Trial and Appeal Board (PTAB).
Typically, rejections relate to the law, and objections relate to the rules.

Neither rejections nor objections spell the end of the road for your patent application. Objections
can typically be overcome by amending the content of your application. Rejections can typically be
overcome by amending the content of your application and submitting tailored legal arguments for the
patentability of your invention. This process, called “prosecution,” is a necessary step to ensure that
the USPTO issues quality patents that have been vetted against existing technology. A response to
an Office Action requires a detailed analysis of each claim rejection, objection, and any other issues
raised by the Examiner in the Office Action. Failure to address every issue in the Office Action may
result in further rejections of the patent application, additional fees, and possibly abandonment of your
application.

Navigating through these challenges requires a strategic approach and a deep understanding of
both the legal and technical aspects of your AI invention. It’s crucial to articulate the uniqueness and
patentability of your technology clearly, addressing any concerns raised by the Examiner with precision
and care. This chapter equips you with the knowledge and strategies to effectively respond to Office
Actions, turning potential setbacks into opportunities for strengthening your patent application. By
the end of this journey, you’ll be well-prepared to navigate the complexities of the patent prosecution
process, ensuring your AI innovation stands the best chance of securing the protection it deserves.

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RAPACKE LAW GROUP AI PATENT GUIDE

The RLG Guarantee

Chapter 5
The RLG Guarantee + The Patent
Process and Timeline
Artificial intelligence patents are invaluable assets that will bring your company strategic value. Patents
will not only protect your proprietary software from infringement, increase the valuation of your
company, and provide a competitive advantage in the marketplace but will provide both short-term
and long-term monetization strategies. The Rapacke Law Group is a fixed fee (no billable hour) patent
and intellectual property firm designed for software and technology companies looking to protect their
most valuable intellectual property assets. Our firm provides one transparent fixed fee for all patent and
trademark matters without the hassle of surprise costs or nickel-and-dime billing used by traditional law
firms.

In addition to a fixed-fee billing approach, RLG offers a money-back guarantee on all prior art searches,
trademark applications, provisional patent applications, and design patent applications. To be clear:
should our team determine that your invention is not patentable in light of the prior art, a full refund
will be provided. If patentable, we will credit the cost of your search towards your new application. For
trademark and design patent applications, this means that if your application does not receive a notice
of allowance for any reason, we will provide a full refund. Our trademark and design patent application
packages include all search, preparation, office action, USPTO correspondence, and filing fees. Please
call us at (954) 951-0154 for a free consultation, or take our intelligent IP quiz to see what protection is
best for your invention.

Schedule a Free Patent Strategy Call

Attorney advertising materials. This article is written for information purposes only and should not be considered as legal advice,

nor does this information create an attorney-client or similar relationship. Deciding if you need legal services and choosing a

lawyer are important decisions that should be based on criteria beyond these materials. Please contact an experienced, licensed

attorney to discuss any specific questions you may have.

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RAPACKE LAW GROUP AI PATENT GUIDE

Patent Process &

Timeline

Embark on the patent journey, a rigorous but rewarding process,

all with the goal of securing exclusive rights to your unique AI
software innovation

Immediate 1-2 Weeks 2-4 Weeks

01 // 02 // 03 //

Invention Patentability Patent

Disclosure Search Application
Drafting
Patent Process

Remember, these
timelines are averages
and can vary based Document your Conduct a search Prepare a patent
on several factors. invention in to determine if your application that

Always consult with detail, including invention is novel includes a written

its workings and and non-obvious description,
a patent attorney for
unique aspects. compared to drawings, and
advice tailored to your
claims defining
specific situation.

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RAPACKE LAW GROUP AI PATENT GUIDE

18-24 Months Varies After Approval 2.5, 7.5, 11.5 years

after issuance

04 // 05 // 06 // 07 //

Patent Office Patent Patent

Examination Actions Issuance Maintenance

Wait for the patent Respond to any Receive your Pay maintenance
office to review objections or patent, granting you fees at regular
your application rejections from the exclusive rights to intervals to keep
and determine examiner, potentially the invention for 20 your patent active.
if your invention amending claims or years from the filing

meets the criteria. arguments. date, upon approval

of the application.

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