On August 27, 2019, the U.S. Patent and Trademark Office (“USPTO”) published a Request for Comments on Patenting Artificial Intelligence Inventions in the Federal Register. The Request follows Director Iancu’s statement that America’s national security and economic prosperity depend on the United States’ ability to maintain a leadership role in Artificial Intelligence (AI) and other emerging technologies, as explained in another post on an artificial intelligence conference held by the USPTO earlier this year.

Recent Rapid Advances in AI Technologies

The recent confluence of big data, increasingly faster and more specialized hardware, improved algorithms, and increased investment has led to rapid advancement in AI technologies and applications such as computer vision, natural language processing, medical diagnostics, robotics, autonomous vehicles, and drug development, among others. And while the Request does not define the term “artificial intelligence,” the USPTO does provide a class definition for the examination of AI inventions and patent applications, and Class 706 identifies several technologies encompassed by AI technology.

Reasons for and Scope of the Request for Comments

The twelve questions enumerated in the Request are a preliminary guide to aid the USPTO in collecting relevant information to evaluate whether further patent examination guidance is needed to promote the reliability and predictability of patenting AI inventions, and are intended to ensure that appropriate patent protection incentives are in place to encourage further innovation in and around this critical area. At this time, it is uncertain as to whether the USPTO will issue examination guidance that pertains to AI inventions.

The questions, set forth more fully below, pertain to issues that include i) identifying elements of an AI invention; ii) conception, inventorship, and ownership; iii) patent eligibility, written description and enablement considerations; and iv) whether new forms of intellectual property protections are needed for AI inventions, such as data protection. Comments are due by October 11, 2019, and can be submitted via email to AIPartnership@uspto.gov.

Questions Presented in Request for Comments on Patenting Artificial Intelligence Inventions

  1. What are elements of an AI invention?
  2. What are the different ways that a natural person can contribute to conception of an AI invention and be eligible to be a named inventor?
  3. 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 an invention?
  4. Should an entity or entities other than a natural person, or company to which a natural person assigns an invention, be able to own a patent on the AI invention? Are there any patent eligibility considerations unique to AI inventions?
  5. Are there any disclosure-related considerations unique to AI inventions? Does there need to be a change in the level of detail an applicant must provide in order to comply with the written description requirement, particularly for deep-learning systems that may have a large number of hidden layers with weights that evolve during the learning/training process without human intervention or knowledge?
  6. How can patent applications for AI inventions best comply with the enablement requirement, particularly given the degree of unpredictability of certain AI systems?
  7. Does AI impact the level of a person of ordinary skill in the art? If so, how?
  8. Are there any prior art considerations unique to AI inventions?
  9. Are there any new forms of intellectual property protections that are needed for AI inventions, such as data protection?
  10. Are there any other issues pertinent to patenting AI inventions that we should examine?
  11. 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?

Takeaways

The comments received by the USPTO may eventually affect aspects of the examination of AI-related patent applications. Patent applicants and stakeholders would be well served to consider comments submitted to the USPTO and monitor ongoing USPTO developments, trends, and requirements that may pertain to the filing and examination of AI-relate