USPTO Asks Whether AI Inventorship Uncertainty Requires Change

The United States Patent and Trademark Office (USPTO) is requesting public comments on artificial intelligence (AI) and inventorship via a Federal Register Notice published today, February 14.

The Office has sought comment on the topic before, but not since its decision to deny patent protection to inventions created by Stephen Thaler’s artificial intelligence (AI) machine, DABUS. That decision was upheld by the district court and U.S. Court of Appeals for the Federal Circuit (CAFC) on appeal, but the CAFC in its decision left open the possibility that inventions made by human beings with the assistance of AI may be eligible for patent protection.

The USPTO’s FRN explains:

“In the wake of the Thaler decision and in view of the current state of AI and machine learning, there remains uncertainty around AI inventorship…. If these technologies are in fact capable of significantly contributing to the creation of an invention, the question arises whether the current state of the law provides patent protection for these inventions. Accordingly, in order to foster and promote AI-enabled innovation, the USPTO requests further stakeholder feedback on the current state of AI technology in the invention creation process and on how to address inventions created with significant AI contributions.”

The FRN further notes that the Office will be holding stakeholder engagement sessions on the topic and that it will be seeking to collaborate with academia to help illuminate the role of AI in innovation “from a scholarly perspective.” The “Journal of the Patent and Trademark Office Society” will publish a special issue on inventorship and AI-enabled innovation and will be accepting submissions at [email protected] through July 1, 2023.

The FRN poses 11 questions for written response. They include “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship by, for example, simply listing the natural person involved in inventions created by AI machines; and if statutory or regulatory changes should be made to better address AI contributions to inventions.

Comments are due by May 15, 2023 via the Federal eRulemaking Portal at www.regulations.gov.

In a separate FRN, the USPTO again extended the deadline for comments on its “Initiatives to Ensure the Robustness and Reliability of Patent Rights”. Comments are now due by February 28, 2023. There were 131 comments posted as of February 14.

The Office also published an FRN today extending its COVID-19 Prioritized Examination Pilot Program for a sixth time.

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Author: HBRH