Gauging the Latest From the USPTO Relating To AI

On October 30, 2023, U.S. President Joe Biden signed an executive order regarding Artificial Intelligence (AI) to start establishing standards for its protections and regulation. “To realize the promise of AI and avoid the risk, we need to govern this technology,” Biden said at the time. Among other areas of focus, the executive order called on the U.S. Patent and Trademark Office (USPTO) to review and provide guidance on AI as it relates to well-established principles concerning inventorship and patentability.

Prior to the order, the USPTO had been proactively seeking comment from the patent sector on whether AI should be credited as an inventor and whether AI could alter what is deemed as too obvious for protection. The order is now pressing the USPTO to publish guidelines to address these issues, and in doing so to provide examples on how AI tools can be properly utilized by inventors during their processes, which will seemingly impact how U.S. patent examiners weigh AI contribution and how AI accessibility could render an invention too obvious for protection. Adding more pressure, the order gave the USPTO 120 days to provide guidance on such issues.

Fast forward to the present, the end of the 120-day window is rapidly approaching. Perhaps looking to relieve some of the pressure, the USPTO issued a memorandum last week indicating that its mechanisms will be sufficient in gauging attorney conduct related to the use of AI tools. Even more recent, the USPTO has indicated that if AI is found to have generated an idea and only minimal or obvious contributions were needed to further reduce the idea to practice, then a patent cannot be granted to the invention. Particularly, a human must be found to have made a “significant contribution” to the invention for the invention to be patented.

These announcements are interesting. On the one hand, they have not provided concrete examples relating to the above-noted inventorship and obviousness issues; however, they have provided some breadcrumbs to follow.

At a minimum, it is clear from the announcements that the USPTO is taking seriously the dilemma of more and more applicants using AI tools in preparing portions of filed applications. To that end, it seems the Office has provided a warning of sorts that applicants’ overuse of or over-reliance on AI tools could be at their own (and their applications’) perils.

Likely feeling the crunch of the executive order’s impending deadline, the USPTO may have made the announcements to create a bridge to more time to provide further guidance and/or examples. At this point, being able to definitively identify portions of applications that stem from AI sources seems crucial in accurately addressing the above-noted questions relating to inventorship and obviousness. Thus, it would not be a surprise to find the USPTO requiring such text be correspondingly earmarked in the future. Time will tell. In any case, a good future practice for applicants might involve keeping accurate records of all that is sourced via AI, as such records could be particularly valuable if needing to fend off challenges pertaining to inventorship and/or obviousness.   

  • John S. Parzych

    John is a shareholder in Fredrikson’s Intellectual Property Group. He is registered to practice before the U.S. Patent and Trademark Office. His practice focuses on patent preparation and prosecution, counseling clients ...

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