USPTO Examines AI's Impact on Intellectual Property, Calls for Comments

The U.S. Patent & Trademark Office (USPTO) is soliciting comments on various issues, including whether AI can author a prior art disclosure, whether the use of AI should be disclosed in an IP application, and whether applicants should disclose when AI is utilized in preparing an application or publication.

Additionally, the USPTO seeks input on whether AI-generated prior art disclosures should be distinguished from human-produced disclosures and whether the proliferation of AI-generated prior art could pose a barrier to patenting inventions.

USPTO issued a request for comments in the Federal Register titled "Request for Comments Regarding the Impact of the Proliferation of Artificial Intelligence on Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art, and Determinations of Patentability Made in View of the Foregoing."

The request for comments closes on July 29, 2024.

Earlier this year, USPTO released guidance addressing the utilization of AI in submissions to the Office, aimed at both practitioners and the general public.

This announcement follows the issuance of a memorandum by the Office to the Trademark and Patent Trial and Appeal Boards (TTAB and PTAB) two months ago, which provided clarification on the appropriate use of AI tools before these Boards, aligning with existing regulations.

“The USPTO recognizes the possibility that AI will be used to prepare and prosecute patent and trademark applications, as well as other filings before the Office including filings submitted to the PTAB and TTAB,” the guidance reads.

AI Can’t Hold Patents

Similarly, USPTO, through a new policy, embraced the integration of AI in innovation. At the same time, the office stressed the necessity of attributing a human contributor to a patent.

This guidance clarifies that while AI-assisted inventions are not automatically ineligible for patents, the assessment of inventorship should prioritize human input.

The USPTO will examine inventorship matters as AI systems, such as generative AI, become more prevalent in the innovation landscape. Patents serve to encourage and recognize human creativity, thus warranting a focus on human contributions during the inventorship evaluation, the patent office said.