US Patent Agency Seeks Comments on Patenting AI Inventions

Balough September 3, 2019 0

(September 3, 2019) The question of how artificial intelligence inventions may or should be patented has been put out for public comment by the U.S. Patent and Trademark Office (“USPTO”).

The USPTO has issued a request for comments on twelve questions to help the agency develop new rules or modify existing law with respect to patenting artificial intelligence inventions. Current rules and law provide that only humans may be inventors, a subject that has been explored frequently by various commentators including by Balough Law Offices in various articles and book chapters.

The USPTO will seek comments until October 11 on the following questions:

  • 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?
  • 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?
  • 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?
  • 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?
  • Are there any disclosure-related considerations unique to AI inventions?
  • How can patent applications for AI inventions best comply with the enablement requirement, particularly given the degree of unpredictability of certain AI systems?
  • 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, such as data protection?
  • Are there any other issues pertinent to patenting AI inventions that we should examine?
  • Are there any relevant policies or practices from other major patent agencies that may help inform the USPTO’s policies and practices regarding patenting of AI inventions?
In the News Blog, Intellectual Property