October 11, 2019
The US Patent and Trademark Office (“USPTO”), on August 27th, 2019, issued a Request for Comments on Patenting Artificial Intelligence Inventions (“Request”) and recently extended the deadline for submitting comments to November 8th, 2019.
The Request’s issuance highlights that artificial intelligence (“AI”) is an increasingly important area for patent protection and that the question of AI’s patentability presents unique challenges. These challenges will no doubt need to be addressed over time in future federal cases and in evolving USPTO patentability policies. In the Request, the USPTO enumerates a dozen different areas in which it seeks comments. Topics include inventorship, ownership, appropriate forms of protection, and the applicability of existing patentability rules in areas such as enablement and eligibility.
Some questions address unsurprising issues related to the nuts and bolts of AI inventions and patenting. The lead question in the Request asks about the relevant content of AI inventions. It offers examples of possible invention elements, including the problem solved, the structure of the relevant data used, the selection and substance of the AI algorithms used, the training process, and the use of the results.
The Request also raises questions about eligibility and disclosure issues related to AI inventions. Regarding the latter, one question asks whether meeting the written description requirement might require more detailed disclosure for AI inventions than for other computer-related inventions. Another asks how meeting the enablement requirement is affected by what the Requests calls the “unpredictability of certain AI systems.”
The Request also asks several more provocative questions about invention and inventorship in the context of AI, including: “Do current patent laws and regulations regarding inventorship need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of the invention?” Did the USPTO just ask whether an AI system itself can be an inventor? This, indeed, is a radical question!
Unless and until a machine is considered to be “conscious,” it is hard to see how a machine can contribute to “conception.” But even before such a day arrives, one can imagine challenging IP issues arising when an AI system leads to the “discovery” of a technical improvement to an existing product or design of a new product that is very real, but is not technically “invented” by anyone.
Full text of the Request for Comments on Patenting Artificial Intelligence Inventions: https://www.federalregister.gov/documents/2019/08/27/2019-18443/request-for-comments-on-patenting-artificial-intelligence-inventions