USPTO publishes Request for Comments regarding the impact of AI on certain patentability determinations

New Federal Register notice seeks public feedback on how the proliferation of AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of ordinary skills in the art

The increasing power and deployment of artificial intelligence (AI) have the potential to provide tremendous societal and economic benefits and foster a new wave of innovation and creativity while also posing novel challenges and opportunities for intellectual property (IP) policy. Our AI and Emerging Technologies Partnership team has spent the past few years engaging with the innovation community and AI experts on issues at the intersection of AI and IP policy, including inventorship of AI-assisted inventions, subject matter eligibility, and other patentability considerations.   

As part of our agency’s work to shape AI policy, we are now publishing a Request for Comments (RFC) seeking public feedback on how AI could affect other evaluations we make as we determine whether or not an invention is patentable under U.S. law. For example, the use of AI poses questions as to what qualifies as prior art and the assessment of the level of skill of a person having ordinary skill in the art (PHOSITA). We expect that the responses received will help us evaluate the need for further guidance on these matters, aid in the development of any such guidance, and help inform our work in the courts and in providing technical advice to Congress.    

“As AI assumes a larger role in innovation, we must encourage the responsible and safe use of AI to solve local and world problems and to develop the jobs and industries of the future, while ensuring AI does not derail the critical role IP plays in incentivizing human ingenuity and investment,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “This work builds on our inventorship guidance, which carefully set forth when the USPTO will issue a patent for AI-assisted innovations, and our continuing policy work at the intersection of AI and all forms of IP.”  

This RFC builds on our recent AI-related efforts associated with President Biden’s directives under the Executive Order on Safe, Secure, and Trustworthy AI to provide guidance to examiners and the public on the impact of AI and issues at the intersection of AI and IP, including patent eligibility. As outlined in the Executive Order, we recently released guidance on inventorship for AI-assisted inventions and will issue recommendations for executive action related to copyright and AI and guidance on the intersection of AI and subject matter eligibility. In addition, the USPTO recently issued guidance to USPTO’s examiners, judicial boards, and the public on the use of AI in preparing applications and other filings before the agency.  For more information, please visit the USPTO’s Artificial Intelligence initiatives webpage.    

The USPTO is working with Secretary of Commerce Gina Raimondo and other federal agencies to guide U.S. policy on AI and other areas of consideration, including the use of data in AI training, transparency and regulatory disclosures, trade secret protection, and the legal implications of AI-generated content.  

The full FRN can be found here. Comments are due by July 29, 2024. Please see the Federal Register Notice for instructions on submitting comments.