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USPTO Seeks Comments on Artificial Intelligence and Inventorship
Practical Law Legal Update w-038-5093 (Approx. 3 pages)
USPTO Seeks Comments on Artificial Intelligence and Inventorship
by Practical Law Intellectual Property & Technology
| Published on 14 Feb 2023 • USA (National/Federal) |
The US Patent and Trademark Office (USPTO) seeks comments on the state of artificial intelligence (AI) technology in the invention creation process and whether the current state of the law provides patent protection for inventions created with significant AI contribution.
On February 14, 2023, the USPTO published a notice seeking comments and other engagement to help assess:
- The state of AI technology in the invention creation process.
- Whether the current state of law provides adequate patent protection for inventions created with significant AI contribution.
The USPTO is particularly interested in receiving comments on:
- How AI is being used in invention creation and if any AI contributions rise to the level of a human joint inventor.
- If AI contributions rise to the level of a human joint inventor, whether the invention would be patentable under current law, for example whether:
- 35 U.S.C. §§ 101 and 115 can be interpreted to only require naming the human inventor and not the AI joint inventor;
- current jurisprudence supports the interpretation that only the human inventor would need to be named on the patent; and
- the number of human inventors involved affects these answers.
- How the use of AI in invention creation differs from the use of other technical tools.
- Ownership issues for inventions where AI contributes at the level of a joint inventor, including if those who trained (or whose information trained) the AI may also have rights.
- Any need for the USPTO to expand on its inventorship guidance to address situations where AI significantly contributes to an invention.
- If, and how, the USPTO should require applicants to explain any AI contributions to inventions claimed in patent applications, including whether such contributions should be treated differently from those made by other computer systems.
- Additional steps the USPTO should take to:
- incentivize AI-enabled innovation;
- lessen harm and risk from AI-enabled innovation; and
- promote the practices in Blueprint for an AI Bill of Rights and AI Risk Management Framework.
- Any statutory changes that should be made to US inventorship law and consequences, including if AI systems should be eligible to be listed as inventors and if listing an inventor should be required.
- Other countries' laws or practices that effectively address AI inventorship contributions.
- Areas of focus the USPTO should prioritize when engaging with AI and IP stakeholders.
Comments must be submitted May 15, 2023 via the Federal eRulemaking Portal at www.regulations.gov. For more information on AI patentability, see Practice Note, Artificial Intelligence: Patentability Considerations. For a collection of AI resources, see Artificial Intelligence Toolkit.