James Huie

Offline LLMs can work great for patent drafting, but they also have their limitations compared to ChatGPT. This video gives a quick comparison. Are you on team "offline LLM" or team "ChatGPT" for your patent drafting work? 🙋 The video is a snippet from the Powerclaim Seminar where we address exactly the question of model selection and many more. The next seminar is on April 30th, so get your ticket quickly: https://lnkd.in/djeMZKUc

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Google Wins Patent Battle Over Nest Smart Home Tech #PatentLaw #IPLitigation #SmartHome A California federal court ruled in favor of Google, dismissing EcoFactor's patent claims over Nest thermostats. The court found that the patent, involving thermal efficiency calculations for air conditioners, lacked sufficient inventiveness. This decision underscores the importance of meeting patent eligibility standards under §101 and highlights challenges in protecting software-based innovations. A key win for tech companies navigating IP disputes. #Innovation #TechLaw #PatentEligibility

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Happy to close a strong 6-figure sale for this legacy tech still in use. Patent Divestment is sometimes helping individual inventors or startups earn a return on their ingenious inventions. Other times, it’s a matter of helping institutional investors recoup some of their investment. Too many patents from failed ventures go unnecessarily abandoned. We were glad to help Claret Capital Partners get a return so they can focus on future tech investments! https://lnkd.in/gTRjuSwB #patents #patentsales

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𝗠𝗼𝗱𝗲𝗿𝗮𝘁𝗶𝗼𝗻 𝗶𝗻 𝗽𝗮𝘁𝗲𝗻𝘁𝘀, 𝗮𝘀 𝗶𝗻 𝗮𝗹𝗹 𝘁𝗵𝗶𝗻𝗴𝘀, 𝗶𝘀 𝗮 𝘃𝗶𝗿𝘁𝘂𝗲. I say this in response to the absolutism that I see so often in connection with patents. On the anti-patent side, some people say that 𝗽𝗮𝘁𝗲𝗻𝘁𝘀 𝗮𝗿𝗲 𝗻𝗼𝘁 𝗼𝗻𝗹𝘆 𝘄𝗼𝗿𝘁𝗵𝗹𝗲𝘀𝘀 𝗯𝘂𝘁 𝗲𝘃𝗶𝗹. On the pro-patent side, I know some who believe that there should be 𝗻𝗼 𝗲𝘅𝗰𝗲𝗽𝘁𝗶𝗼𝗻𝘀 𝘁𝗼 𝗽𝗮𝘁𝗲𝗻𝘁 𝗶𝗻𝗳𝗿𝗶𝗻𝗴𝗲𝗺𝗲𝗻𝘁 𝗮𝗻𝗱 𝘁𝗵𝗮𝘁 𝗶𝗻𝗷𝘂𝗻𝗰𝘁𝗶𝗼𝗻𝘀 𝘀𝗵𝗼𝘂𝗹𝗱 𝗮𝗹𝘄𝗮𝘆𝘀 𝗯𝗲 𝗴𝗿𝗮𝗻𝘁𝗲𝗱 𝗳𝗼𝗿 𝗶𝗻𝗳𝗿𝗶𝗻𝗴𝗲𝗺𝗲𝗻𝘁. Regardless of the merits of these positions, what often strikes me is the 𝗱𝗲𝗽𝘁𝗵 𝗼𝗳 𝗳𝗲𝗲𝗹𝗶𝗻𝗴 𝘁𝗵𝗮𝘁 𝗮𝗰𝗰𝗼𝗺𝗽𝗮𝗻𝗶𝗲𝘀 𝘁𝗵𝗲𝗺 -- a moralistic attitude and degree of emotion that seems out of proportion to the topic. There are proponents on each side who not only vigorously defend their opinions, but do so with a tone that smacks of 𝘀𝗲𝗹𝗳-𝗿𝗶𝗴𝗵𝘁𝗲𝗼𝘂𝘀𝗻𝗲𝘀𝘀 𝗮𝗻𝗱 𝗱𝗶𝘀𝗱𝗮𝗶𝗻 𝗳𝗼𝗿 𝗼𝗽𝗽𝗼𝘀𝗶𝗻𝗴 𝘃𝗶𝗲𝘄𝘀. What I find perplexing about this is that patents are, in many ways, like many other business tools -- such as insurance, capital reserves, and real estate -- that don't typically stir up such strong emotions, entrenched positions, or judgment of people with different approaches. For example, people might not like paying their business insurance premiums, and might even debate which types of insurance are the best fit for a particular business, but I'm not aware of a widespread belief that "insurance is evil" in the ethical sense. I haven't even heard anyone say that "trademarks are evil." Yet the ideological aversion to patents persists (especially for software). And my general impression of tech investors is that they are pragmatists who will adopt whatever strategies will produce the greatest returns on investment. Yet I encounter a good number of them who have an across-the-board anti-patent policy. Although I've dedicated decades of my life to securing and enforcing patent rights for my clients, and I can see the allure of becoming a "true believer" in patents, I generally have a more pragmatic attitude that views 𝗽𝗮𝘁𝗲𝗻𝘁𝘀 𝗮𝘀 𝗼𝗻𝗲 𝗼𝗳 𝗺𝗮𝗻𝘆 𝗽𝗿𝗮𝗰𝘁𝗶𝗰𝗮𝗹 𝘁𝗼𝗼𝗹𝘀 𝗶𝗻 𝗮 𝘁𝗼𝗼𝗹𝗸𝗶𝘁. In other words, I do my best to avoid falling into the trap of seeing everything as a nail just because my primary tool is a hammer. In fact, I've generally found that: • Patents are either not applicable or are not the most appropriate tool in a wide variety of situations; and • In those situations in which patents are the right tool, they do the job extremely well and very cost-effectively. Have you experienced "patent absolutism"? Do you defend it? Oppose it? What are its causes? What is it about patents that stirs up such strong emotions in what is otherwise considered a stodgy and arcane topic? #patents #ip

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I had the pleasure of speaking with Angela Morris as part of IAM's "Women in IP" profile series. During our conversation, we discussed how Qualcomm leverages its massive investments in R&D to enable #innovation across industries. I was also happy to share my thoughts on career development, leadership, negotiation, and the importance of protecting intellectual property. Feel free to check out the full article below! #IP

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#IntellectualProperty. Week 7 of “Startups” at the University of Michigan Law School. In our definition of a #startup, we home in on its orientation around a scalable product which is innovative and differentiated. That differentiation assumes some level of defensibility, and this is where IP comes in. So what is it? #IP is intangible property. It encompasses creations of the mind, such as inventions, artistic works, designs, and symbols used in commerce. The Constitution grants Congress the power to regulate #Patents and #Copyrights. Patents require formal registration, copyrights do not. Both give the creator a monopoly of sorts in their creation for a period of time, permitting them to fend-off infringers. The registration of patents matters, as it tells the world the recipe. Which provides a guidebook to infringers but, even more importantly, direction to law-abiders who simply wait until the patent expires and then permissibly replicate the invention (example: generic drugs). Consequently, a big decision faced by many startups is making the patent versus trade secret decision. A #TradeSecret is a type of IP that consists of valuable and confidential business information. The law of trade secrets is primarily state-based, but there are some relevant federal laws. Unlike patents, trade secrets do not require registration and can be protected indefinitely as long as they remain secret (example: formula for Coca-Cola). Two key contractual takeaways: 1️⃣ Patents and copyrights generally run to their individual creators. Consequently, if the startup is to ensure ownership, it should subject all creators to an #InventionAssignmentAgreement. This should cover all IP generally, but it’s especially essential here. 2️⃣ An important means of maintaining the secrecy of, well, trade SECRETS is confidentiality agreements. Hence the dreaded #NDA… Let’s not forget #Trademarks, a type of IP that consists of an identifying sign, design, or expression. While they may not go to the how-to of the business in the way the other types do, they can matter a LOT as brand identifiers, particularly for B2C companies (example: McDonald’s Golden Arches). Like patents, trademarks can be registered with the United States Patent and Trademark Office (#USPTO) - that gives you the ®. But interestingly, unregistered trademarks can offer meaningful rights under common law (tagged with the ™). In a reverse of trade secrets, the law of trademarks is primarily federal-based, but there are some relevant state laws. Like trade secrets (but unlike patents), trademarks won’t expire so long as they are maintained. That policing often takes the form of the dreaded cease and desist letter (example: when Starbucks tells knock-off logos to stop). Final point: IP is often the “currency” used by #founders to purchase their #FounderStock. More to come! #DWProf [Pic: me happily contemplating NDAs and C&Ds on a beautiful Fall day in Ann Arbor]

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My legal Anti-trust/Competition Law expert friends weigh in with your thoughts please. Common for a company to ask potential investors to not fund competitors - usually with a general description of competitive business activities (note - a company seeking funding will never get agreement to this request unless it is the rockstar start-up of the moment with VC's fighting for an allocation spot). However, I am not sure I have ever heard of a list of specific competitors being presented in writing like OpenAI allegedly has done. It doesn't seem like a bad ask from a company perspective if you have VC's banging at the door to be let into a funding round. This ensures that the VC fund won't be sharing any of your confidential info with a competitor (yes, I know they have confidentiality agreements, but practically it is a valid concern) and also has 100% focus on supporting your company. But I wonder if taking the step of putting a list of competitors in writing might have raised an anti-competition violation argument here? Section 2 of the Sherman Act is very broad: "Every person who shall monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce among the Several States… shall be guilty of a felony…" Being a monopoly is not bad or illegal in and of itself in the US. If a company achieves a monopoly because of superior products, services and/or first entrant model, that is fine. The Sherman Act Section 2 comes into play when that monopolist then tries to use "anti-competitive means" to obtain or maintain that monopoly position, commonly called "exclusionary conduct." There are lots of arguments that VC financing should be outside the gambit of competition law. Generally, exclusionary conduct examination has focused on activities with a monopoly's customers - exclusive contracts, predatory pricing, MFN's, refusals to deal - or working with some competitors (price fixing). Is anyone aware of a situation where requiring VC shareholders to pledge non-investment in competitors (either specifically named or by a general description of competitive business activities) was challenged as anti-competitive? I wonder also how non-US competition law would look at this conduct?

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𝗢𝗯𝘁𝗮𝗶𝗻 𝗽𝗮𝘁𝗲𝗻𝘁𝘀 𝘁𝗵𝗮𝘁 𝗵𝗮𝘃𝗲 𝗺𝗮𝘅𝗶𝗺𝘂𝗺 𝘃𝗮𝗹𝘂𝗲 𝗳𝗼𝗿 𝘆𝗼𝘂𝗿 𝗳𝘂𝘁𝘂𝗿𝗲 𝗮𝗰𝗾𝘂𝗶𝗿𝗲𝗿. When I meet with early-stage startup founders about patent protection, they often tell me that they only need patents in the U.S. because they will not be doing a significant amount of business internationally. Yet, in the next breath, they tell me that their exit strategy is to be acquired by Microsoft, Google, Amazon, or another multinational tech giant. That's when I point out that obtaining patents -- or at least preserving patent rights -- outside the U.S. can add significant value to their company in an acquisition by a multinational company. This is just one example of why it is so important to 𝗸𝗲𝗲𝗽 𝘆𝗼𝘂𝗿 𝗽𝗼𝘁𝗲𝗻𝘁𝗶𝗮𝗹 𝗮𝗰𝗾𝘂𝗶𝗿𝗲𝗿𝘀 𝗮𝘁 𝘁𝗼𝗽 𝗼𝗳 𝗺𝗶𝗻𝗱 𝘄𝗵𝗲𝗻 𝗼𝗯𝘁𝗮𝗶𝗻𝗶𝗻𝗴 𝗽𝗮𝘁𝗲𝗻𝘁𝘀. For example, ask yourself not only 𝘄𝗵𝗶𝗰𝗵 patents those acquirers would find valuable, but 𝘄𝗵𝗲𝗿𝗲 they would find it valuable to acquire patents from you. Although obtaining an international patent portfolio can be expensive, there are strategies for maximizing the return on investment on an international patent portfolio efficiently. For example, once you have invested in an initial patent application in your home country, you can file a PCT (international) patent application at a relatively low marginal cost that preserves your patent rights in most countries for 2.5 years from your original filing date. If you get acquired before that deadline arises, your acquirer can assume the cost of pursuing patent protection in multiple countries. You can also strategically select certain patent applications for which to preserve foreign rights. If you're an early stage startup and have filed several patent applications in your home country, preserving international rights for even 𝗼𝗻𝗲 of those patent applications often can significantly increase the attractiveness of your patent portfolio to a multinational acquirer. I know that resources are scarce in growing startup companies and that everything is competing for scarce funds. If, however, your goal is to be acquired by a multinational company that values patents, 𝗸𝗲𝗲𝗽 𝘆𝗼𝘂𝗿 𝗲𝘆𝗲𝘀 𝗼𝗻 𝘁𝗵𝗲 𝗽𝗿𝗶𝘇𝗲. Relatively small incremental investments in patents in multiple countries can provide a significant return on investment when assessed by a large company that stands to benefit from, and has the resources to invest in, those patents in multiple countries. #patents #intellectualproperty

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California passes SB-1223, which extends consumers' protected sensitive information to include neural data, and SB 1120, which requires health care providers to make the final decisions on what kind of treatments patients receive rather than AI. #CA #AI #healthcare #neuraldata #ConsumerProtection

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I found this Littler article regarding the Supreme Court’s decision in Loper Bright and its impact on potential federal legislation regarding AI. It's interesting in light of advanced efforts at the state level (e.g., in Colorado and, to an extent, California) that would seemingly withstand some of the non-delegation concerns raised in Loper Bright. Worth a read. https://lnkd.in/dj_E2ipA #ai #artificialintelligence #ailaw #loperbright #technology #techlaw #tech #regulation #policy #sb1047

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In this article, my Foley colleagues Chanley Howell and Leighton Allen discuss the major themes covered by the AI-related bills signed by California's Governor Gavin Newsom. Click below to read more. #California #ArtificialIntelligence #AI

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This is the future of legaltech: software that actually ties into business operations and bridges them to legal.

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Product counsel question: how do you justify your existence? Our impact can be uniquely tough to quantify. Our client teams think in terms of lines of code and monthly active users. Our own legal departments may be used to counting litigation documents and IP applications submitted or contracts signed. At companies with separate regulatory and privacy legal subject matter experts, credit for wins can get murky (or even contentious). It’s hard not to sweat OKR setting when your work doesn’t tidily fit existing metrics. Here are three strategies for quantified my impact that have resonated: * Embracing the business metrics: Look at how your clients are measuring their performance (or ask!) and see where you can frame your work around those numbers. Benchmarking is particularly persuasive. If you see another company get burned for something you flagged, make that save concrete by laying out the impacts, including dollar amounts of fines or decisions and estimates on product and eng hours that new compliance burdens would require. * Scaling impact by engaging proactively: Look for bumps in company process and practice that are regularly slowing folks down, document them, and fix them. If you’re answering the same questions over and over, create guidelines and socialize them with your client teams. If the same risky language keeps popping up in multiple product reviews, book 15 minutes in an upcoming all-hands to lay out best practices. Within legal, building (and IMPLEMENTING) a lightweight decision documentation system will save time you can quantify. * Finding numbers: If you truly have no time for large-scale thinking (and those quarters happen!), take an hour to quantify what you’ve done in terms of your client teams’ progress. Even better, if you can see from the roadmap and staffing that you’re going to be in a fugue state for the next six months, get that structure in place ahead of time and count decisions made/launches launched as you go. It saves you time at the end of the year and makes the wall of work easier to break up and appreciate in the moment. Fellow #productcounsel - how do you quantify and communicate your value? Have these approaches worked for you, or do you have other approaches?  #techlawyer #techlaw

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🥚📈 Forget the price of eggs—wait until you see the new USPTO fee hikes! 💸 The USPTO has officially dropped its final rule on patent fees, and starting January 19, 2025, the cost of innovation is going. Why? Inflation , higher examiner pay, and small-entity discounts cutting into revenue. Most fees are increasing by 7.5%. Filing, search, and examination fees will see a smaller bump of 2.5%. ⚠️ Critics say these hikes could put the USPTO’s fee-setting authority at risk when it expires in 2026. The USPTO, however, insists the increases are necessary to stay financially stable. 💡 Pro tip: If your IP budget is tight, now’s the time to act! Filing your applications or wrapping up prosecution matters before January 19 could save you some serious 💰. 👉 Want more details? Here's a small breakdown of the changes and what they mean for your IP strategy! https://lnkd.in/gzZzCGBb. #USPTO #patentfees #intellectualproperty #innovation #patents #IP

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Proud of the strides we're making in patent monetization at XLSCOUT with our LLMs & Generative AI-powered Claim Chart LLM module. It's a true game-changer in simplifying the process of identifying potential infringers and licensees. With over 100 companies already reaping its benefits, XLSCOUT's Claim Chart LLM module is undeniably at the forefront of helping clients extract maximum value from their patents. #AIInnovation #ArtificialIntelligence #GenerativeAI #IntellectualProperty #Innovation #IP #ClaimChartLLM #PatentMonetization #LatestUpdates #AI #LLM #LLMTechnology #IPStrategy #LicensingSolutions #ClaimChart #CuttingEdgeTechnologies #LargeLanguageModels #AIIntegration #Tech #InnovationLeadership #IPRights #AIInBusiness #TechInnovation #AIINIP #IPMonetization #Patent #EmergingTech #XLSCOUT

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In preparation for speaking at this PLI program, The Convergence of Artificial Intelligence and Intellectual Property in California and Beyond 2024. I was thinking about advising on AI trends. As AI technologies evolve, the role of a product counsel has become critical in guiding businesses through a complex web of regulatory challenges and ethical considerations. From privacy concerns to intellectual property risks, advising on AI trends requires not only a deep understanding of the law but also a forward-looking approach to emerging technologies. Here’s how product counsels can add value in this ever-changing landscape: 1. Staying Ahead of Regulatory Changes The legal framework surrounding AI is still catching up with the pace of innovation. In my role at DocuSign, I stay ahead of regulatory developments by closely monitoring changes in AI laws and guidelines. For example, the EU AI Act and the proposed updates to the US AI Bill of Rights present both opportunities and challenges for product teams. 2. Mitigating AI-Related Risks AI introduces novel risks, from biased algorithms to potential IP infringement. Product counsels play a key role in identifying these risks early in the development cycle. At DocuSign, part of my role involves advising engineering and product teams on how to mitigate risks by integrating ethical AI practices into the product design process. 3. Supporting Innovation While Ensuring Compliance Balancing innovation with compliance is a constant challenge. However, it’s possible to do both effectively. At DocuSign, we’ve integrated legal reviews early in the AI product lifecycle, helping to foster innovation while ensuring we meet privacy, security, and regulatory standards. This collaborative approach ensures that legal isn’t a bottleneck but rather a strategic partner in the innovation process. 4. Educating Cross-Functional Teams AI regulations are complex, and product teams may not always be aware of the legal implications of their work. As a product counsel, one of my goals is to educate cross-functional teams on these legal considerations. Through workshops and regular updates, I help my colleagues understand how AI-related laws, such as data protection and algorithmic transparency, can impact their projects. 5. Adapting to Future AI Trends The future of AI is full of potential, but it’s also unpredictable. As product counsels, we need to keep an eye on emerging trends such as AI ethics, deep learning, and autonomous decision-making systems. By understanding these trends, we can advise businesses on how to navigate the evolving legal landscape while staying competitive. How is your legal team preparing for the future of AI? And to learn more about the upcoming PLI program, see https://lnkd.in/g5mr7RQ3 #LegalInnovation #ProductCounsel #AIRegulation #TechLaw #PLI #DocuSign #AITech #FutureOfAI

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Had a fantastic time last week at the American Conference Institute's AI Law, Ethics, Safety & Compliance conference, hosted by the D.C. Bar! It's not everyday that you get to hear from such distinguished in-house counsel and technologists as: - Meng Jia Yang at OpenAI and Ani Gevorkian at Microsoft about how #AI developers are navigating the #EU #AIAct;   - Betsy Greytok at IBM and Zheng Yang at Amazon Web Services (AWS) about the safety, ethical, and compliance considerations of #GenerativeAI;  - Jackie Stanley at Pfizer about what #ResponsibleAI development looks like; - Corey Salsberg at Novartis about the ethics of training models on copyrighted content; and - Matthew Frederick at Boeing, Markus Hartmann, J.D., M.B.A. at Mister Car Wash and Julie Myers Wood at Guidepost Solutions about ensuring the protection and confidentiality of customer data in AI operations. Not to mention learning about #AIwashing, #AIgovernance frameworks, using AI for good and AI #cybersecurity with representatives from the Federal Trade Commission (Aaron Rieke), U.S. Securities and Exchange Commission (Virginia Rosado Desilets), U.S. Department of Justice (Lisa Miller), EEOC (Ray Peeler), USCIS (Shane Barney), U.S. Department of Homeland Security (Chris Kraft), Bureau of Cyberspace and Digital Policy (Alka Patel, JD, MBA) and National Institute of Standards and Technology (NIST) (Elham Tabassi). It was also a pleasure to hear from Kai Zenner, the Head of Office and Digital Policy Adviser for MEP Axel Voss in the European Parliament, who is involved in the political negotiations on the AI Act, #AILiabilityDirective, #ePrivacy Directive and a potential #GDPR revision. Some takeaways for developers: - focus on transparency and explainability by design, instead of later needing to shoehorn a square peg (your product) into a round hole (laws and regulations); - ensure that all personnel involved have the right competency levels, and that they know the internal escalation channels for complex issues; and - there's no overstating the value of engaging in cross-stakeholder discussions on the #dataprivacy and #dataprotection aspects of customer data acquisition, storage and processing - don't stay siloed (shout out to the Jacquard product and engineering teams)! It was a pleasure to be surrounded by so many smart, thoughtful and friendly people -- looking forward to the next event!

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At ClioCon, one of the prevailing narratives around AI is that it will enable small firms to eat big firms' lunch. Big firms are structured as pyramids, with partners at the top and associates filling out the ranks beneath them. If solos and boutiques can instead use an army of AI agent "associates" - the argument goes - they'll soon be able to compete with the traditional BigLaw structure. This is a seductive narrative, and it's easy to see how you get there given the current state of the market. Big firms are like the titanic - slow to steer - while small firms are speedboats that can adopt new tech much faster. But eventually, even the titanic does start to turn. In fact, it feels to me right now like big firms are at the leading edge in terms of *thinking about* AI. Where it can and should be used. And how to use it in a high-quality, reliable way. Where big firms are behind is in actually rolling it out across every attorney and practice group in the firm. So is the narrative true? Will AI let small firms keep up with big firms? I think the real question mark is the business model. To really lean into AI, you need to do at least some work on flat fees. Small firms can switch to flat fees relatively easily. For big firms, it will be much harder. But again, even the titanic eventually turns. How quickly it turns - and quickly clients start to demand it - will be the determining factor.

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California has been passing various legislation relating to AI and generative AI. Linked here is a nice summary of AI-related laws that were passed and the one that was specifically vetoed due to, as explained in Governor Newsome's veto message, the proposed law "not tak[ing] into account whether an Al system is deployed in high-risk environments, involves critical decision-making or the use of sensitive data. Instead, the bill applies stringent standards to even the most basic functions - so long as a large system deploys it. I do not believe this is the best approach to protecting the public from real threats posed by the technology." Of the laws that passed, the ones I think my network will find most relevant are: AB 1008 – Clarifies that personal information under the California Consumer Privacy Act (CCPA) can exist in various formats, including information stored by AI systems. AB 2013 – Requires AI developers to post information on the data used to train the AI system or service on their websites (in certain circumstances). AB 2885 – Establishes a uniform definition for AI, or artificial intelligence, in California law.  AB 3030 – Requires specified health care providers to disclose the use of GenAI when it is used to generate communications to a patient pertaining to patient clinical information. SB 942 – Requires the developers of covered GenAI systems to both include provenance disclosures in the original content their systems produce and make tools available to identify GenAI content produced by their systems. https://lnkd.in/g4wqEgwH #AI #GenerativeAI #AILegislation #AILaws

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