USPTO seeks people’s opinion on AI inventions

Sep 02, 2019




USPTO is asking for the help of experts and the broader public to determine the impact AI will have on intellectual property and “whether new forms of intellectual property protection are needed.”

A call for public comment was published in the Federal Registrar by the USPTO in search of answers about such issues as how AI is reshaping perceptions of inventions or whether additional information should be required to claim a deep learning system as an invention since they can have a large number of hidden layers and weights that evolve.

To help solicit responses, the notice in the federal registrar comes along with a series of questions:

  1. Inventions that utilize AI, as well as inventions that are developed by AI, have commonly been referred to as “AI inventions.” What are elements of an AI invention? For example: The problem to be addressed (e.g., application of AI); the structure of the database on which the AI will be trained and will act; the training of the algorithm on the data; the algorithm itself; the results of the AI invention through an automated process; the policies/weights to be applied to the data that affects the outcome of the results; and/or other elements.
  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? For example: Designing the algorithm and/or weighting adaptations; structuring the data on which the algorithm runs; running the AI algorithm on the data and obtaining the results.
  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? For example: Should a company who trains the artificial intelligence process that creates the invention be able to be an owner?
  5. Are there any patent eligibility considerations unique to AI inventions?
  6. Are there any disclosure-related considerations unique to AI inventions? For example, under current practice, written description support for computer-implemented inventions generally require sufficient disclosure of an algorithm to perform a claimed function, such that a person of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. 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?
  7. How can patent applications for AI inventions best comply with the enablement requirement, particularly given the degree of unpredictability of certain AI systems?
  8. Does AI impact the level of a person of ordinary skill in the art? If so, how? For example: Should assessment of the level of ordinary skill in the art reflect the capability possessed by AI?
  9. Are there any prior art considerations unique to AI inventions?
  10. Are there any new forms of intellectual property protections that are needed for AI inventions, such as data protection?
  11. Are there any other issues pertinent to patenting AI inventions that we should examine?
  12. 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?

Laura Peter, deputy under secretary of commerce for intellectual property and deputy director of the USPTO said in a blog post “In addition to patents, in the coming months and beyond, the USPTO will examine the full spectrum of intellectual property policy issues that have arisen, or may arise, as AI technologies become more advanced,”.

The publication of the list of questions and call for comments follows a USPTO conference held in January to discuss AI’s impact on intellectual property like copyrights and trademarks.

Topics of discussion in January included how AI plays a role in counterfeit detection and intellectual property enforcement.

The USPTO will continue to receive comments on AI’s impact on intellectual property until October 11.

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