In a recent decision, the US Patent Trial and Appeal Board (PTAB) affirmed the rejection of a patent application filed by IBM entitled “Constant Folding for Compilation of Quantum Algorithms.” This case offers valuable insights into the complexities of patenting innovations in the rapidly evolving field of quantum computing.
The Claimed Invention
The patent application 16/296,817 relates to a method for optimizing quantum circuits used in quantum computing. The invention claims a process that involves:
- Transforming a quantum algorithm into a quantum circuit with quantum gates.
- Simulating the execution of these gates to determine a qubit’s state.
- Comparing the qubit’s state to another state to measure quantum fidelity.
- Removing gates based on these fidelity measurements to create a more efficient quantum circuit; and
- Executing the optimized circuit in a quantum processor.
The Examiner rejected the application under 35 U.S.C. § 112(a) for lacking sufficient written description. They argued that the specification did not adequately detail the specific algorithms for transforming the quantum algorithm and simulating the quantum gates, which the Examiner considered to be crucial given the complexity and nascent state of quantum computing. An “off-the-shelf processor” could not perform the function without a specialised algorithm, and this specialised algorithm was not disclosed in the description.
The Applicant (appellant) essentially argued that the claims outline the functionality of the transformation and simulation processes for the quantum algorithm, which should be sufficient. The Applicant continued that the specification did not need to detail specific quantum algorithms, as any suitable algorithm could perform the described functions. Finally, the Applicant argued that known methods at the time of filing should suffice to inform those skilled in the art in implementing the invention.
The Appeal Board disagreed and upheld the examiner’s initial rejection. The Board once again emphasised the need for detailed descriptions in the specification, especially in complex and emerging fields like quantum computing. It highlighted that general statements about transforming and simulating quantum circuits are insufficient without specific procedural details, and finally the high degree of complexity and the immature state of quantum computing technology demand a thorough disclosure to demonstrate possession of the claimed invention.
Our Key Takeaways
- Detailed Descriptions are Crucial: Especially in complex fields, such as quantum computing, patent applications must include comprehensive details to meet the written description requirement. The description should include at least one or more embodiment with concrete steps for implementing the invention.
- Emerging Technologies Require More Rigour: Innovations in fields like quantum computing are scrutinized more heavily by the patent office due to their complexity and the expertise required to understand and implement the inventions.
- General Functional Claims are not Enough: The description must include specifics on how the functions are achieved are necessary to satisfy patent requirements.
Conclusion
This decision highlights the importance of providing detailed descriptions in patent applications, particularly for emerging and complex technologies such as quantum computing or indeed artificial intelligence. The decision is a reminder of the need to thoroughly document the specifics of an invention to meet the rigorous standards of patent law.
Although the decision relates to a US patent application, the principles that the Appeal Board applied are equally valid for patent applications filed in other countries.
We have extensive experience in successfully prosecuting patent applications in the field of quantum computing. Please get in touch if you require support.
