On August 22, 2019, the United States Patent and Trademark Office (USPTO) published a request for comments on patenting artificial intelligence inventions. In addition to seeking general feedback from the public, the USPTO posed the following questions for comment:
- What are elements of an AI invention;
- How can a natural person contribute to conception of an AI invention and be eligible to be a named inventor;
- Do current patent laws and regulations regarding inventorship need to be revised;
- Should an entity other than a natural person (or company) be able to own a patent;
- Are there any patent eligibility considerations unique to AI inventions;
- Are there any disclosure-related considerations unique to AI inventions;
- How can patent applications for AI inventions best comply with the enablement requirement;
- Does AI impact the level of a person of ordinary skill in the art;
- Are there any prior art considerations unique to AI inventions;
- Are there any new forms of intellectual property protections that are needed for AI inventions (e.g., data protection);
- Are there any other issues pertinent to patenting AI inventions that the USPTO should examine; and
- Are there any relevant policies or practices from other major patent agencies that may help inform USPTO’s policies and practices regarding patenting of AI inventions.
Written comments must be received on or before October 11, 2019. The AI inventorship issue came to a head earlier this year when the inventor of an algorithm named DABUS (device for the autonomous bootstrapping of unified sentience) filed beverage container and flashing light patent applications in DABUS’ name in the United Kingdom, Europe, and the United States. Additionally, many today see patent eligibility as a significant hurdle to obtaining patent protection in AI technologies.
China and the United States lead in patent filings in all AI techniques and functional applications, as well as AI application fields. See WIPO Technology Trends 2019, Report on Artificial Intelligence. But there is currently no global consensus on the patenting of AI inventions. The USPTO has not published guidance specific to artificial intelligence technologies, and such technologies are therefore treated under the general eligibility framework pursuant to 35 U.S.C. § 101. In Japan, a software invention is patentable if its information processing aspects are required to be “specifically implemented by using hardware resources,” and the Japanese Patent Office has published patent examination case examples pertinent to AI-related technologies. In China, a “computer program-related invention” with “technical characteristics will not be excluded from patentability.” The Korean Intellectual Property Office (KIPO) guidelines provide that computer programs per se are not eligible for patenting, but “that if computer software is claimed in conjunction with hardware, then the combination, the operating method of the combination, and a computer-readable medium containing the software that implicates the combination is patent eligible.” KIPO has also introduced accelerated examination procedures for applications related to technical fields in the “Fourth Industrial Revolution,” including artificial intelligence. The European Patent Office guidelines for artificial intelligence and machine learning patents provide that such technologies may be patent-eligible when those technologies are applied in technical fields of endeavor. See New EU Patent Guidelines May Affect Companies’ AI Strategy.
We expect many stakeholders to weigh in at the USPTO in view of the growing importance of AI innovations in the United States. Indeed, earlier this year, President Trump issued an Executive Order on Maintaining American Leadership in Artificial Intelligence, noting that “[c]ontinued American leadership in AI is of paramount importance to maintaining the economic and national security of the United States and to shaping the global evolution of AI in a manner consistent with our Nation’s values, policies, and priorities.” If the USPTO’s revised Patent Subject Matter Eligibility Guidance is any indicator, we may see further guidance from the USPTO leaning in favor of the patentability of AI inventions.