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Feb 14 -- The United States Patent and Trademark Office (USPTO) plays an important role in incentivizing and protecting innovation, including innovation enabled by artificial intelligence (AI), to ensure continued U.S. leadership in AI and other emerging technologies (ET). In June 2022, the USPTO announced the formation of the AI/ET Partnership, which provides an opportunity to bring stakeholders together through a series of engagements to share ideas, feedback, experiences, and insights on the intersection of intellectual property and AI/ET.

To build on the AI/ET Partnership efforts, the USPTO is seeking stakeholder input on the current state of AI technologies and inventorship issues that may arise in view of the advancement of such technologies, especially as AI plays a greater role in the innovation process. As outlined in sections II to IV below, the USPTO is pursuing three main avenues of engagement with stakeholders to inform its future efforts on inventorship and promoting AI-enabled innovation: a series of stakeholder engagement sessions; collaboration with academia through scholarly research; and a request for written comments to the questions identified in section IV. The USPTO encourages stakeholder engagement through one or more of these avenues.

Submissions to the special issue of the “Journal of the Patent and Trademark Office Society” may be made directly to the journal at editor@jptos.org by July 1, 2023. Comments, in general, and responses to the questions identified in section IV must be received by May 15, 2023 to ensure consideration.

In August 2019, the USPTO issued a request for public comments on patenting AI inventions. Among the various policy questions raised in the notice, the USPTO requested comments on several issues involving inventorship, such as the different ways a natural person can contribute to the conception of an AI invention and whether current laws and regulations involving inventorship need to be revised to consider contributions from entities other than natural persons. See Request for Comments on Patenting Artificial Intelligence Inventions, 84 FR 44889 (August 27, 2019). In October 2020, the USPTO published a report titled “Public Views on Artificial Intelligence and Intellectual Property Policy,” which took a comprehensive look at the stakeholder feedback received in response to the questions posed in the August 2019 notice. With respect to inventorship, some commenters took the position that current AI could not invent without human intervention and that current inventorship law is equipped to handle inventorship that involves AI technologies. However, other commenters indicated that AI can potentially contribute to the creation of inventions in a variety of ways, including generating patentable inventions to which no human has made an inventive contribution.

Subsequently, in June 2022, the USPTO held its inaugural AI/ET Partnership meeting. During a panel discussion on “Inventorship and the Advent of Machine Generated Inventions,” there was a discussion among the panelists about AI's increasing role in innovation. Although there was consensus that AI cannot “conceive” of inventions, some panelists contended that AI is merely a tool like any other tool used in the inventive process, while others pointed to situations in which AI systems can output patentable inventions or contribute at the level of a joint inventor. Details and a recording of the inaugural AI/ET Partnership event are available at https://www.uspto.gov/​about-us/​events/​aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy.

While the USPTO was exploring the contours of inventorship law with respect to AI generated inventions, the USPTO received applications asserting that an AI machine was the inventor. On April 22, 2020, the USPTO issued a pair of decisions denying petitions to name Device for Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as the inventor. The USPTO's decision explained that under current U.S. patent laws, inventorship is limited to a natural person(s). The USPTO's decision was upheld on September 2, 2021 in a decision from the United States District Court for the Eastern District of Virginia. Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021). On appeal, the Court of Appeals for the Federal Circuit (Federal Circuit) affirmed the holding that an inventor must be a natural person. Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022). Specifically, the Federal Circuit held that 35 U.S.C. 100(f) defines an inventor as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The court found that based on Supreme Court precedent, an “individual” ordinarily means a human being unless Congress provided some indication that a different meaning was intended. Id. at 1211 (citing Mohamad v. Palestinian Auth. 566 U.S. 449, 454 (2012)). Based on the finding that there is nothing in the Patent Act to indicate Congress intended a different meaning, and that the Act includes other language to support the conclusion that an “individual” in the Act refers to a natural person, the court concluded that an inventor must be a natural person. Id. The court explained, however, 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.” Thaler v. Vidal, 43 F.4th at 1213.

In addition, 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). For example, at the AI/ET Partnership meetings, the USPTO heard that new AI models are being used in drug discovery, personalized medicine, and chip design. As noted above, some stakeholders have indicated that technologies using machine learning may be able to contribute at the level of a joint inventor in some inventions today. Further, Congress has taken note of the increased role that AI plays in innovation. On October 27, 2022, Senators Thom Tillis and Chris Coons called on the USPTO and the U.S. Copyright Office to jointly create a national commission on AI to consider changes to existing law to incentivize future AI-related innovations and creations.

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. This uncertainty is becoming more immediate as AI, particularly machine learning, systems make greater contributions to innovation, as noted above. 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 USPTO will hold stakeholder engagement sessions regarding inventorship and AI-enabled innovation. Information about these sessions will be announced in the Federal Register and posted on the AI/ET Partnership web page at www.uspto.gov/​aipartnership.

The USPTO also seeks to foster increased academic engagement on inventorship and AI-enabled innovation. Universities and academic researchers play a multifaceted role in illuminating AI's role in innovation. Many of the technical breakthroughs that underpin AI's potential ability to contribute to the inventive process are inspired by work in university research labs. Legal and policy scholars from those same institutions can help explore the resulting implications from an intellectual property perspective. The USPTO encourages universities to support research and related academic initiatives—particularly those that foster interdisciplinary collaboration between AI technical researchers, legal scholars, and other contributors—that can help address open questions in this area, such as the ones posed in section IV of this notice, from a scholarly perspective. When appropriate, the USPTO will consider opportunities to engage and collaborate with such academic initiatives via the AI/ET Partnership.

The USPTO welcomes novel scholarship that can inform its future efforts as to inventorship and AI-enabled innovation. Recognizing the value of a diversity of perspectives, the USPTO invites both descriptive and normative contributions from a variety of disciplines, including but not limited to computer science, law, public policy, economics, applied mathematics, and cognitive science. The “Journal of the Patent and Trademark Office Society” plans to publish a special issue focused on inventorship and AI-enabled innovation. Submissions for this special issue may be made directly to the journal at editor@jptos.org by July 1, 2023.

The USPTO will closely monitor scholarship published in this and other venues for helpful insights that advance our 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 USPTO invites written responses from the public to the following questions: . . .

FRN: https://www.federalregister.gov/d/2023-03066

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