Interviewed by Bert Schiettecatte, Expert Computer Scientist.
I see that you originally studied law at Cornell, then got an MBA at Temple University and finally an electrical engineering degree at Arizona State University. How did you decide to study electrical engineering after law school?
In short, I recognized the value of a hard science degree, especially in the world of intellectual property. I started my career doing intellectual property litigation without any sort of formal engineering training, but that had significant limits: I couldn’t prosecute patents, which meant that I had a fairly limited understanding of the nuances of patent prosecution (and how those nuances can affect litigation). Recognizing those limits, I began to take engineering classes (in secret–my prior firm wasn’t a fan of me doing so!) and eventually got my electrical engineering degree.
Admittedly, I’m also just the kind of nerdy guy that genuinely enjoys learning. Even after getting those degrees, I continue to actively participate in various certification programs: I’ve recently become a Certified Specialist of Wine, a Certified Specialist of Spirits (alcohol, not ghosts), and have become a Registered Yoga Teacher. That sort of thirst for knowledge is what led me to working in intellectual property in the first place.
I’ve noticed that a major focus area for your practice is video game technology. What are some of the challenges in protecting video game technology and novel business models in video games?
Many video game inventions face the same difficulties as software-based inventions. In my experience, there’s still quite a bit of inconsistency amongst patent examiners and patent offices regarding patent subject matter eligibility. As a result, even the coolest of video game-related inventions can be subject to onerous (and often unreasonable) subject matter eligibility rejections. On top of that, the video game industry is huge and rapidly-evolving, meaning that there’s already a lot of prior art out there: after all, even the smallest, most unpopular indie video game can act as prior art to a new patent application.
That said, inventors of video game-related inventions shouldn’t be discouraged: a good patent prosecutor (like me!) can proactively guard against many of these issues through careful patent application drafting and through smart patent prosecution practices. Those prosecutors might not be able to promise you a granted patent, but they can definitely help avoid common pitfalls.
From what I understand you also do pro bono work. Which of the pro bono matters you worked on are you most proud of and why?
I think I’m most proud of my work with a detainee at Guantanamo Bay. While I can’t speak about the details of my involvement too much, the process was difficult but worthwhile: I was able to help secure the release of an individual that had been imprisoned in Guantanamo Bay for more than a decade. It was one of those once-in-a-lifetime sort of pro bono cases that I’m very proud of.
I recently came across a news post on linkedin about PatentPal, which from what I understand, is a language generation tool for patent drafting. What are your thoughts on the abilities of state of the art machine learning to help draft patents?
I’m a big fan of artificial intelligence in general: I work on a lot of artificial intelligence-related patents, and play with a lot of machine learning tools in my spare time. That said, I’m currently pretty skeptical of language generation tools for patent drafting. Patent application drafting is an art, and the language in patent applications must be carefully drafted to address a variety of considerations (e.g., clarity, breadth, existing art).
As one example, and returning to one of the points I made above, I wouldn’t trust a language generation tool to generate a video game-related patent application, as there’d be too much risk that the language generation tool would spend too much wordcount on easy/inconsequential stuff (such as waxing poetic about generic computer functions) and too little wordcount on the important stuff (such as why the invention is useful in the particular context of video games, why other folks in the games industry didn’t come up with the invention before, and the like).
The USPTO recently made a landmark decision concluding that AI cannot be a named patent inventor. What are your thoughts on this decision and can you elaborate on what this means for inventors who might rely on AI for new inventions they plan to patent?
I personally think the USPTO came to more or less the right conclusion: while artificial intelligence can provide some really interesting output, that output is based on specific training and specific input that requires human intervention. Stated differently, artificial intelligence is a really cool tool, but it’s just that–a tool, configured and used by one or more human beings. I suspect that the USPTO’s decision won’t change much for inventors, though I do think there might be interesting questions about inventorship in the context where various individuals might participate in the training of a machine learning model but might not be involved in providing input to the machine learning model and/or interpreting output from that machine learning model.
Last June I came across a few articles online covering news about a Google engineer who claimed that an AI was “sentient” and had hired an attorney. What are your thoughts on the possibility that AI powered software might autonomously draft and apply for a patent without any involvement of a human?
I don’t doubt someone will try to train an artificial intelligence-based system to draft a patent and apply for it, if only for the novelty of it (and probably to generate press). Of course, even then, the artificial intelligence would have been programmed, trained, and/or executed by someone–there will almost certainly be some human being somewhere that could be considered the inventor.
In any event, I also think the exercise would be a potential waste of time and money. Patent prosecution fees can be rather expensive, and letting an artificial intelligence model file potentially poorly-drafted patents willy-nilly seems wasteful.
Do you see a role for blockchain technology such as smart contracts in patent licensing?
Possibly, but it’d definitely depend on how the technology is implemented. Smart contracts could be a cool way to handle licensing where decentralization and automation are desirable: for example, for managing purchases of online art asset licenses, or something like that. That said, I doubt that those systems will replace conventional licensing systems, particularly for high-value patents and/or in circumstances where privacy is important. I suspect that many blockchain-based implementations will be little more than a solution looking for a problem.
What are your thoughts on potential abuse by 3rd parties of intellectual property, in the metaverse? What are the challenges for intellectual property owners who want to protect their work in the metaverse?
I have a very dim view of the future of the metaverse, and honestly don’t see it as presenting unique issues in the intellectual property world. The same intellectual property issues in the metaverse (e.g., unauthorized use of content in the metaverse) are those present in any virtual environment, such as in virtually any online video game. As just one example, virtually every risk that the metaverse possibly poses to intellectual property rights holders is already an issue on video games such as Second Life and VRChat (which are somewhat infamous for their users’ use of likely copyright-infringing material).
For law students who want to enter your area of specialty down the line in their careers, which skills do you think are the most important to focus on?
One of the most useful skills to have as a patent lawyer is the ability and willingness to learn. Almost by definition, people working in patent law are working with ideas and technologies that have never been thought of before, such that the subject matter is often far beyond what you’d find in conventional college textbooks and Wikipedia articles. Along those lines, some of the best patent lawyers I know have a keen ability to learn new technical concepts quickly and deeply, even if those concepts aren’t their area of expertise.
Where can our readers learn more about your work and how can they contact you?
Most of my recent publications and articles are listed on my page on my firm website - https://bannerwitcoff.com/people/kirk-sigmon/
That said, folks should feel free to e-mail me directly at email@example.com