USPTO requests input on AI’s impact on patentability
Office calls for public comments to evaluate tech’s influence | Request seeks insights into how AI influences prior art, obviousness | Questions include ‘should parties be required to notify the USPTO if a submitted disclosure was AI-generated?’
The US Patent and Trademark Office (USPTO) has issued a request for public comments concerning the impact of AI on patentability.
The request, published today, April 30, 2024, seeks input on the influence of AI on prior art and the knowledge of a person having ordinary skill in the art.
Lawyers have eagerly awaited guidance from the USPTO on AI and patentability. Despite patent offices increasingly focusing on the technology’s influence over the IP system, clarity for rightsholders and professionals remains an issue.
Through its AI and Emerging Technologies Partnership, the office has been engaging with the innovation community and AI experts on IP policy.
Building on this, the USPTO wants written public comments on how the proliferation of AI could affect several evaluations it makes regarding the technology.
The USPTO plans to evaluate the need for further guidance on the impact of AI on patentability determinations and aid in the development of such guidance.
Additionally, it intends to inform its work in the courts and in providing technical advice to Congress.
Efforts to address AI impact
Kathi Vidal, under secretary of commerce for IP and director of the USPTO, said the office has been proactive in addressing the impact of AI on patent policy issues.
In August 2019, the USPTO issued a request for comments on patenting AI inventions, seeking comments on AI’s impact on a person having ordinary skill in the art and prior art considerations unique to AI inventions.
This was followed by a report published in October 2020, titled ‘Public Views on Artificial Intelligence and Intellectual Property Policy’, which gave an analysis of stakeholder feedback.
Subsequently, the USPTO launched the AI and Emerging Technologies Partnership in June 2022. The partnership held several events in 2022 and 2023, focusing on various aspects of AI's influence on patentability.
In February 2023, the USPTO issued another request for comments on AI and inventorship, seeking comments on the impact of AI on obviousness determinations and the person having ordinary skill in the art assessment.
Impact of AI on prior art and ordinary skill
In its latest public outreach scheme, the USPTO is seeking input on several key questions related to the impact of AI on prior art, including: What types of AI-generated disclosures would be pertinent to patentability determinations? Should parties be required to notify the USPTO if a submitted disclosure was AI-generated? And should AI-generated disclosures be treated differently than non-AI-generated disclosures for prior art purposes?
The USPTO is also seeking comments on the impact of AI on the knowledge of a person having ordinary skill in the art.
This includes: Does the term ‘person’ in the person having ordinary skill in the art assessment presume or require that the ‘person’ is a natural person? How does the availability of AI as a tool affect the level of skill of a person having ordinary skill in the art? And how does the availability of AI as a tool impact the understanding of claim terms by a person having ordinary skill in the art?
Additionally, the USPTO is seeking input on the implications of AI that could require updated examination guidance and/or legislative change.
For example, guidance on the impact of AI, the impact of AI on patentability determinations made by the office, and laws or practices in other countries that can address the impact of AI on patentability determinations.
The public was invited to submit comments, which must be received by July 29, 2024, through the Federal eRulemaking Portal.
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