AI/ET Partnership Series #1: Kickoff – USPTO AI/ET activities and patent policy

Ryan Abbott, MD, JD, MTOM, PhD, is Professor of Law and Health Sciences at the University of Surrey School of Law, Adjunct Assistant Professor of Medicine at the David Geffen School of Medicine at UCLA, partner at Brown, Neri, Smith & Khan, LLP, and a mediator and arbitrator with JAMS, Inc. He is the author of “The Reasonable Robot: Artificial Intelligence and the Law” published in 2020 by Cambridge University Press. He has published widely on issues associated with life sciences and intellectual property in leading legal, medical, and scientific books and journals, and his research has been featured prominently in the popular press including in The Times of London, the New York Times, the Financial Times, and other media outlets involving time. Professor Abbott has worked as an expert for, among others, the United Kingdom Parliament, the European Commission, the World Health Organization, and the World Intellectual Property Organization. He is a licensed physician and patent attorney in the United States, and a solicitor advocate in England and Wales. Managing Intellectual Property magazine named him as one of the fifty most influential people in intellectual property in 2019 and again in 2021. www.ryanabbott.com 

Aliza Carrano is a trial lawyer and registered patent attorney at Finnegan, Henderson, Farabow, Garrett & Dunner. She represents clients before the U.S. district courts, the U.S. International Trade Commission, the Patent Trial and Appeal Board, and the U.S. Court of Appeals for the Federal Circuit. Her experience involves a broad range of technologies including electronics, software, optics, wireless communications, financial technology, and medical devices. Aliza has extensive experience advising clients on litigation strategies concerning subject matter eligibility issues. As the Co-Lead of Finnegan’s artificial intelligence working group, she also helps clients navigate complex and critical intellectual property issues relating to AI technology. Aliza has researched and published several articles on intellectual property issues and artificial intelligence.

Mary Critharis is the Chief Policy Officer and Director for International Affairs, United States Patent and Trademark Office (USPTO). Mrs. Critharis serves as a policy advisor to the Under Secretary of Commerce for Intellectual Property, and oversees the USPTO’s domestic and international IP policy activities; legislative engagement, through the Office of Governmental Affairs; education and training, through the Global Intellectual Property Academy (GIPA); global advocacy, through the IP Attaché Program; and economic analysis, through the Office of  the Chief  Economist. She started at the USPTO as a patent examiner back in 1992 and since then has worked in a number of important positions, including  Assistant Solicitor, Attorney Advisor, Senior Patent Counsel, and Deputy Chief Policy Officer and Senior Counsel. She also worked from 2001 to 2002 as Counsel  to the United States Senate Judiciary Committee. Mrs. Critharis has a bachelor’s degree in chemistry and political science from New York University, a master’s degree in biotechnology from Johns Hopkins University, and a juris doctor from Brooklyn Law School, where she was the Executive Editor of the Brooklyn Journal of International Law. 

Randall Davis received his PhD in artificial intelligence from Stanford in 1976 and came to MIT in 1978 where he is a Professor of Computer Science. He has worked in a variety of areas of artificial intelligence, publishing some 125 papers. He was one of the founders of a startup company that brought to FDA approval a patented algorithm for detecting early cognitive decline; the algorithm is in use internationally in clinical trials. 

He has also been active in the area of intellectual property and software. In 1990 he served as expert to the Court in Computer Associates v. Altai, which produced the abstraction, filtration, comparison test for software copyright. A 1994 paper in the Columbia Law Review analyzed the difficulties in applying intellectual property law to software and proposed a number of remedies. From 1998-2000 he served as the chairman of the National Academy of Sciences study on intellectual property rights (The Digital Dilemma). He has served as an expert in a variety of software copyright and patent cases, including the investigation by the DoJ of the Inslaw matter, where he investigated allegations of copyright theft and cover-up by the FBI, the NSA, the DEA, the Customs Service, and the DIA. 

Charles Duan is a postdoctoral fellow at Cornell University, as well as a senior policy fellow at American University Washington College of Law and a senior fellow at the R Street Institute. His research focuses on the public effects of technology policy and intellectual property law. He previously practiced as a patent attorney at Knobbe Martens, and has written over 150 amicus curiae briefs and administrative comments that have been cited by the Supreme Court, Federal Circuit, and other courts.

Andrew I. Faile is Acting Commissioner for Patents and leads the Patents organization as its chief operating officer. In his permanent role as Deputy Commissioner for Patents, Mr. Faile manages the Workforce Management, Financial Management, and Planning and Data Analysis divisions and the Project Management Office within Patents. He also oversees patent examining functions in technology centers that examine computer architecture, software, network, multiplexing cable, and security technologies.

Mr. Faile has more than 30 years of experience in patent examining and operations management. Previously, he served as Deputy Commissioner for Patent Operations and Assistant Deputy Commissioner for Patent Operations for the electrical discipline. As Deputy Commissioner for Patent Operations, he implemented historic changes that updated patent examination time, application routing, and the patent examiner performance appraisal plan and led the examining corps to achieve focal pendency goals in multiple fiscal years. 

Mr. Faile joined the USPTO in 1989 as a patent examiner and earned an examiner master’s rating in telecommunications in 1994. He received the Department of Commerce Silver Medal for his work on a joint management/union task force to modernize the examiner production system, and the Presidential Meritorious Rank Award in 2014.

Lian Huang is a patent attorney building patent strategy and assets at the nexus of tech and pharma. She is part of digital and personalized health initiatives at Genentech. Prior to Genentech, Lian worked at IP boutiques in Washington, DC. She is also a former Patent Examiner. Lian obtained her JD from Maryland Law, and she graduated from Duke University with a dual degree in Biomedical Engineering and Mechanical Engineering.

Thomas W. Krause is Deputy General Counsel for Intellectual Property Law and Solicitor at the U.S. Patent and Trademark Office. In that capacity, he works with office members to defend of the decisions of the Patent Trial and Appeal Board before the Federal Circuit, works with the Department of Justice on intellectual property cases before the Supreme Court, and provides legal advice to other USPTO components. Prior to joining the USPTO, Mr. Krause practiced with the Washington, D.C. firm of Covington & Burling, where he specialized in patent prosecution and litigation. 

Mr. Krause’s full bio is available at Thomas Krause | USPTO.

Steven W. Lundberg is a registered patent attorney and a founding partner of Schwegman Lundberg & Woessner. He works with entrepreneurs, Fortune 100 companies, and a wide range in between, providing practical legal counseling and time-tested IP strategies. Steve received his B.S.E.E. in 1978 from the University of Minnesota, and his law degree from William Mitchell College of Law (J.D., 1982). He has published and spoken widely on software and electronic patent protection and is a co-editor of the treatise “Electronic and Software Patents: Law and Practice,” published by BNA Books, a leading IP treatise. He is also a principal contributor to the Patents4Software blog – found at www.patents4software.com. 

Jerry Ma serves as the Director of Emerging Technology at the United States Patent and Trademark Office (USPTO), overseeing a comprehensive portfolio of artificial intelligence and emerging technology matters within the agency. In this role, Mr. Ma provides strategic and technical leadership toward ensuring that the USPTO deploys innovative technologies in service of innovators, and that the USPTO adopts forward-thinking policies to support new domains of invention and creativity. Prior to joining the USPTO, Mr. Ma developed engineering and infrastructure agendas for global R&D teams, overseeing major initiatives resulting in the world's first public-domain superhuman Go bot and the first deep neural network to be trained on the known protein universe. Mr. Ma's scientific research has been published at venues such as ICML, ICLR, AAAI, PNAS, and S&P, and he has taught computer science & mathematics in undergraduate, graduate, and professional settings across multiple institutions. Mr. Ma holds an A.B. in Economics and the Classics from Harvard University, and he is admitted to practice before the USPTO. 

Adam Mossoff is a law professor at Antonin Scalia Law School, George Mason University. His research on patent law and innovation policy has been relied on by the Supreme Court, the Federal Circuit, and by the USPTO, FTC, DOJ, and NIST, and he has been invited numerous times to testify before Congress on patent legislation and policy issues, including at the 2019 hearings on the current state of patent eligibility doctrine. His writings on patent policy have also appeared in the Wall Street Journal, New York Times, STAT, Forbes, and in other media outlets. He is a director and senior fellow at several academic centers, think tanks, and policy organizations.

Nalini Mummalaneni is a legal advisor in the Office of Patent Legal Administration. The Office of Patent Legal Administration assists in the development and administration of U.S. patent law, advises the USPTO on patent examination policy, and formulates new regulations, policies, and procedures regarding patents.  In her previous role at the USPTO, Nalini served as a primary patent examiner in TC 2600 and examined patent applications in Telecommunications and Selective Visual Display Systems.  Prior to joining the USPTO, Nalini worked for 7 years at Nortel and Ericsson on 3G and 4G technologies.  Nalini graduated from The George Washington University Law School, and she holds a Master’s in Computer Science from the University of Texas at Dallas and a BS in Electrical Engineering from Nagarjuna University, India. 

John Osha leverages his more than 30 years of IP experience to provide effective strategic counseling to his clients.  His practice covers the full scope of IP with special emphasis on management of complex international IP portfolios. John leads the firm’s electronics, optics, and physics group. 

International harmonization of IP laws is a major focus of John’s work outside the office. He was a member of the Bureau (board) of the International Association for the Protection of Intellectual Property (AIPPI, based in Zurich) for 10 years and was the first American ever to serve as Reporter General of that organization. He is also a member of the American Intellectual Property Law Association’s Harmonization Committee through which he has actively participated in substantive and procedural harmonization discussions in the Industry Trilateral and IP5 Industry groups.   

The impact of Artificial Intelligence on IP law is another major area of focus. Having coordinated work on three AI-related resolutions during his time on the AIPPI Bureau, John now co-chairs AIPLA’s AI task force, IPO’s AI policy subcommittee, and is AIPLA’s representative on the IP5 industry AI task force. 

Nicholas A. Pairolero is a senior research economist in the Office of the Chief Economist at the United States Patent and Trademark Office. His interests are in evidence-based policy making, with research in the economics of innovation. His research has appeared in peer-reviewed academic journals, like Research Policy, and has informed discussions in the U.S. Senate and House of Representatives. In addition, his research has received professional and academic awards, including the Department of Commerce Gold Medal for scientific/engineering achievement, and has been featured in the media (for example, Axios, VentureBeat and Forbes). Nicholas has a Ph.D. and M.A. in Economics from Indiana University Bloomington and a B.B.A. in Economics and Mathematics from the University of Wisconsin Eau Claire. 

Dr. Lynne Parker is the Founding Director of the National Artificial Intelligence Initiative Office in the White House Office of Science and Technology Policy (OSTP). She has advanced AI policy in the White House since 2018, serving an integral role in numerous landmark AI policies bolstering research, governance, education and workforce training, and international engagement. Dr. Parker is on assignment to OSTP from her role as Professor of computer science at the University of Tennessee, Knoxville (UTK). She has held numerous leadership positions, including at UTK (Interim Dean of the College of Engineering), the National Science Foundation (Division Director for Information and Intelligent Systems), and Oak Ridge National Laboratory (Distinguished R&D Staff Member and Group Leader). She is a technical expert on distributed and intelligent robot systems, human-robot interaction, and AI, and has published extensively in these and related areas. She is a Fellow of AAAI (Association for the Advancement of AI), AAAS (American Association for the Advancement of Science), and IEEE (Institute for Electrical and Electronic Engineers), and is also a Distinguished Member of ACM (Association for Computing Machinery). She received her PhD in computer science from the Massachusetts Institute of Technology. 

Joshua D. Sarnoff is a Professor of Law at DePaul University College of Law.  He is a consultant to the World Health Organization’s COVID-19 Technology Access Pool, has testified before the U.S. Senate Judiciary Committee, Intellectual Property Subcommittee, and from 2014 to 2015 was a Thomas A. Edison Distinguished Scholar at the United States Patent and Trademark Office.  He is a registered patent attorney and a private consultant, has been an expert witness and mediator in patent disputes, and has submitted numerous briefs amicus curiae in the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit on a wide range of subjects.  His research and teaching focus on the intersections of domestic and international intellectual property law, environmental law, health law, and administrative law.  Professor Sarnoff is the editor of and a contributing author to the Research Handbook on Intellectual Property and Climate Change (Edward Elgar Publishing 2016), http://www.e-elgar.com/shop/research-handbook-on-intellectual-property-and-climate-change.

Laura Sheridan is senior patent counsel and head of patent policy at Google. She has been a key participant in Google’s global patent policy efforts for over ten years, taking the lead in 2020. Laura advocates for an effective patent examination process, a patent litigation system that operates fairly for all participants, and transparency in these areas. She believes collaboration is the most effective approach to bringing about a balanced patent system, and engages with stakeholders across industries to find solutions. Her patent policy work is shaped by years of private practice experience in patent prosecution, litigation, due diligence, and post-grant practice before the Patent Office.  

An active member of the IP community, Laura is part of the IPO delegation to IP5 Industry, a group which engages with the IP5 Offices (the Offices of China, Europe, Japan, Korea, and the U.S.) on procedural harmonization matters. Laura also helped to form the New York chapter of ChIPs and is a member of the Advisory Board for the NYU Law Engelberg Center on Innovation Law & Policy. Laura studied mechanical engineering at Cornell University and received her J.D. from Fordham Law School. 

Matthew Sked is a Senior Legal Advisor in the Office of Patent Legal Administration at the USPTO.  In this position, he drafts rule packages, memoranda, and associated guidance to implement USPTO initiatives and comply with developments in patent law.  He has been involved with the development of policy in such areas as subject matter eligibility under Section 101, artificial intelligence, claim construction under Section 112(f), information disclosure practice, and the duty of disclosure. Before joining the Office of Patent Legal Administration, he worked as a Primary Patent Examiner in the speech processing and audio coding arts. Matthew received his M.S. in Electrical Engineering from Rensselaer Polytechnic Institute, and his J.D. from the George Mason University School of Law in 2010. 

Kathi Vidal serves as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) – America’s Innovation Agency. As the chief executive of the USPTO, she leads one of the largest intellectual property (IP) offices in the world, with more than 13,000 employees and an annual budget of nearly $4 billion. She is the principal IP advisor to the President and the Administration, through the Secretary of Commerce, and is focused on incentivizing and protecting U.S. innovation, entrepreneurship, and creativity, and helping American workers and businesses compete and collaborate, especially in key technology areas and across demographics. As Director of the USPTO, Vidal is working to expand American innovation for and from all, including serving as the Vice Chair of the Council for Inclusive Innovation (CI²), alongside Secretary of Commerce Gina M. Raimondo and the Council members.   

Prior to leading the USPTO, Director Vidal held top leadership positions at Winston & Strawn LLP and Fish & Richardson P.C. She has served a wide range of clients, from individual inventors and entrepreneurs, to some of our country’s most well-known and successful companies. Director Vidal holds bachelor’s and master’s degrees in electrical engineering, has five years of industry experience in manufacturing and design, and has deep technical expertise in a myriad of technologies, from consumer products to artificial intelligence. In her various roles, Director Vidal has received numerous accolades, created innovative initiatives and programs, and been recognized as a trailblazer and thought leader.  

Director Vidal’s full bio is available on the USPTO website. 

Laura Zager serves as Director, IP Counsel for Software and Artificial Intelligence at Thermo Fisher Scientific, joining Thermo Fisher in 2021 after 13 years in private practice.  Laura holds undergraduate degrees in engineering and mathematics from Swarthmore College, master’s and doctoral degrees in electrical engineering and computer science from the Massachusetts Institute of Technology, and a law degree from Harvard University.  Laura and her family live in Portland, Oregon.