The U.S. Patent and Trademark Office (“USPTO”) is seeking artificial intelligence (“AI”)-specific commentary in connection with its continued efforts to “incentivize and protect innovation, including innovation enabled by AI, to ensure continued U.S. leadership in AI and other emerging technologies.” On the heels of soliciting public comments on patenting AI inventions back in August 2019, USPTO director Kathy Vidal stated in a release on Tuesday that “there is a growing consensus that AI is playing a greater role in the innovation process (i.e., AI is being used to drive innovation in other technologies),” thereby, giving rise to the need for additional input so the agency can “advance [its] understanding of current inventorship doctrine, the present and future capabilities of AI systems relevant to the inventive process, and considerations about whether the U.S. patent system should be modified.”
The call for public comment comes amid rising “uncertainty around AI inventorship,” and in particular, follows from agency’s April 2020 denial of petitions to name Device for Autonomous Bootstrapping of Unified Sentience (“DABUS”), an AI system, as the inventor on the basis that “under current U.S. patent laws, inventorship is limited to a natural person(s).” Affirming the determination that an inventor must be a natural person, the Federal Circuit held in Thaler v. Vidal in Aug. 2022 that the term “inventor” under the U.S. Patent Act must be a human being, but also explained that it “was not confronted with ‘the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.’”
Against that background (including input from “some stakeholders indicat[ing] that technologies using machine learning may be able to contribute at the level of a joint inventor in some inventions today”) and given that existing “uncertainty” over AI and machine learning is “becoming more immediate as AI, particularly machine learning, systems make greater contributions to innovation,” the USPTO states that “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, the USPTO asserts that “in order to foster and promote AI-enabled innovation,” 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” is warranted. The USPTO is inviting written responses from the public to the following questions …
1. How is AI, including machine learning, currently being used in the invention creation process? Please provide specific examples. Are any of these contributions significant enough to rise to the level of a joint inventor if they were contributed by a human?
2. How does the use of an AI system in the invention creation process differ from the use of other technical tools?
3. If an AI system contributes to an invention at the same level as a human who would be considered a joint inventor, is the invention patentable under current patent laws?
For example: (a) Could 35 U.S.C. §§ 101 and 115 be interpreted such that the Patent Act only requires the listing of the natural person(s) who invent(s), such that inventions with additional inventive contributions from an AI system can be patented as long as the AI system is not listed as an inventor? (b) Does the current jurisprudence on inventorship and joint inventorship, including the requirement of conception, support the position that only the listing of the natural person(s) who invent(s) is required, such that inventions with additional inventive contributions from an AI system can be patented as long as the AI system is not listed as an inventor? and (c) Does the number of human inventors impact the answer to the questions above?
4. Do inventions in which an AI system contributed at the same level as a joint inventor raise any significant ownership issues? For example: (a) Do ownership rights vest solely in the natural person(s) who invented or do those who create, train, maintain, or own the AI system have ownership rights as well? What about those whose information was used to train the AI system? and (b) Are there situations in which AI-generated contributions are not owned by any entity and therefore part of the public domain?
5. Is there a need for the USPTO to expand its current guidance on inventorship to address situations in which AI significantly contributes to an invention? How should the significance of a contribution be assessed?
6. Should the USPTO require applicants to provide an explanation of contributions AI systems made to inventions claimed in patent applications? If so, how should that be implemented, and what level of contributions should be disclosed? Should contributions to inventions made by AI systems be treated differently from contributions made by other (i.e., non-AI) computer systems?
7. What additional steps, if any, should the USPTO take to further incentivize AI-enabled innovation (i.e., innovation in which machine learning or other computational techniques play a significant role in the invention creation process)?
8. What additional steps, if any, should the USPTO take to mitigate harms and risks from AI-enabled innovation? In what ways could the USPTO promote the best practices outlined in the Blueprint for an AI Bill of Rights and the AI Risk Management Framework within the innovation ecosystem?
9. What if any, should be considered as to U.S. inventorship law, and what consequences do you foresee for those statutory changes? For example: (a) Should AI systems be made eligible to be listed as an inventor? Does allowing AI systems to be listed as an inventor promote and incentivize innovation? and (b) Should listing an inventor remain a requirement for a U.S. patent?
10. Are there any laws or practices in other countries that effectively address inventorship for inventions with significant contributions from AI systems?
11. The USPTO plans to continue engaging with stakeholders on the intersection of AI and intellectual property. What areas of focus (e.g., obviousness, disclosure, data protection) should the USPTO prioritize in future engagements?