Is AI pushing the envelope of IP protection?
The number of patent applications using artificial intelligence (AI) technology filed in the US doubled between 2002 and 2018. With no sign of these numbers decreasing and every expectation that they will continue to grow, the US Patent and Trademark Office (USPTO) has undertaken several initiatives to explore the boundaries of existing IP law and its suitability to address AI-based innovation.
The USPTO has twice issued requests for comments (RFCs) to obtain feedback from the public regarding a variety of policy issues associated with protecting AI-related IP. A team of USPTO experts reported the feedback in October 2020.
The framework behind the USPTO report
The impetus for the October 2020 report began back in January 2019 when the USPTO held an AI IP policy conference, which included panels on IP rights regarding AI technology. In August 2019, the USPTO issued an RFC on patenting AI inventions. The comment period ended on November 8, 2019.
Following the first RFC, the USPTO issued a second RFC on October 30, 2019, which called for comments relating to the impact of AI on other IP areas, such as copyrights, trademarks, trade secrets, and database protections. This RFC ended on January 10, 2020.
Altogether the USPTO received just under 200 comments from several different entities and individuals including state bar associations, companies, academics, and practitioners. A panel of AI experts at the USPTO was then formed to create a report based on the feedback.
The report is divided into two parts. The first part addresses comments from the first RFC, and discusses issues relating to patenting AI inventions. The second part addresses the second RFC, detailing other aspects of IP. We will highlight some of the key patent issues from the report that will be the subject of debate and further study, including inventorship, subject matter eligibility, and disclosure issues, such as enablement and written description.
Inventorship for AI inventions
One of the central questions addressed in the report was whether current US patent laws regarding inventorship need to be updated in view of inventions where an entity other than a natural person contributed to the conception of the invention.
Current US law provides that anyone who has legally contributed to the conception of an invention can be named as an inventor. Conception is the formulation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.
