The United States Patent and Trademark Office (USPTO) has recently published a Request for Comments (RFC) seeking public feedback on the impact of Artificial Intelligence (AI) on patentability determinations. This move comes as part of the agency’s ongoing efforts to shape AI policy and address the novel challenges and opportunities that AI poses for intellectual property (IP) policy.

AI’s Growing Role in Innovation

AI’s increasing power and deployment have the potential to provide tremendous societal and economic benefits, foster a new wave of innovation and creativity, and pose novel challenges and opportunities for IP policy. As AI assumes a larger role in innovation, it is crucial to encourage the responsible and safe use of AI to solve local and world problems and to develop the jobs and industries of the future.

However, it is equally important to ensure that AI does not derail the critical role IP plays in incentivizing human ingenuity and investment. Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, emphasized this point, stating that the agency’s work builds on its inventorship guidance, which carefully set forth when the USPTO will issue a patent for AI-assisted innovations.

Seeking Public Input on How AI Affects Patentability

The USPTO’s RFC seeks public feedback on how AI could affect several evaluations it makes as it determines whether or not an invention is patentable under U.S. law. For example, the use of AI poses questions as to what qualifies as prior art and the assessment of the level of skill of a person having ordinary skill in the art (PHOSITA).

The agency expects that the responses received will help evaluate the need for further guidance on these matters, aid in the development of any such guidance, and help inform its work in the courts and in providing technical advice to Congress.

Key Questions Raised by the USPTO

The USPTO is particularly interested in input on several key questions related to the impact of AI on prior art. These include: What types of AI-generated disclosures would be pertinent to patentability determinations? Should parties be required to notify the USPTO if a submitted disclosure was AI-generated? And should AI-generated disclosures be treated differently than non-AI-generated disclosures for prior art purposes?

The Role of AI in Patent Research and Application

AI plays a pivotal role in ensuring patent compliance by automating and streamlining the complex process of patent research, application, and management. AI-powered tools can analyze vast databases of existing patents, helping patent professionals identify prior art and potential infringements more efficiently. This not only enhances the value of patents as corporate assets but also mitigates weaknesses in the patent law relating to the absence of patent searches and examinations.

The USPTO’s request for public comments is a step towards understanding the impact of AI on patentability. It reflects the agency’s proactive approach in addressing the influence of AI on patent policy issues and its commitment to engaging with the innovation community and AI experts on IP policy. As AI continues to evolve and influence various aspects of society, it is crucial for IP policy to adapt and evolve in tandem to ensure that it continues to incentivize human ingenuity and investment.