USPTO opens an artificial intelligence partnership with eligibility, inventorship and disclosure on the first agenda

2022-06-29USPTO

Events for the Artificial Intelligence and Emerging Technologies Partnership, 87 Fed. Reg. 34669 (June 7, 2022) (Docket No. PTO-P-2021-0057), signed by Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office; inaugural virtual meeting held June 29, 2022

The Office held the inaugural meeting of its Artificial Intelligence and Emerging Technologies Partnership on June 29, 2022, a virtual session from 1:00 p.m. to 4:45 p.m. Eastern time announced in a June 7, 2022 Federal Register notice. The notice describes the Partnership as "an ongoing, cooperative effort between the USPTO and the AI/ET community" and says the meeting series will cover both the intellectual property policy questions raised by emerging technology and the Office's own use of artificial intelligence to improve the quality and efficiency of examination. The notice traces the effort from the Office's January 2019 conference on artificial intelligence and intellectual property, through its August and October 2019 requests for comment, to its October 2020 reports "Public Views on Artificial Intelligence and Intellectual Property Policy" and "Inventing AI," and cites the National AI Initiative Act of 2020. The inaugural event was to "explore various patent policy issues including subject matter eligibility, inventorship, and disclosure practice," and "Future events will engage stakeholders on other IP policy issues and USPTO efforts in the AI/ET space." At the meeting the Office's Chief Policy Officer, Mary Critharis, presented the Office's June 2022 eligibility report to Congress, including the finding that applications containing artificial intelligence had more than doubled and data "providing suggestive evidence that Alice impacted AI technologies differently."

What it changesThe three topics on the first agenda, eligibility, inventorship and disclosure, are the three places where the Office is building the record for guidance on artificial intelligence, and a company with a position on any of them now has a forum in which the Office is asking. On inventorship, the Office's litigation position in Thaler v. Hirshfeld is that an inventor must be a natural person, so disclosure forms should capture which engineer made each conceptual contribution when a model was used in the work. On disclosure, the Office's August 2019 request for comments asked whether applications involving artificial intelligence need different treatment under written description and enablement, and that question is back, so applications drafted now should describe the training pipeline and the data at a level an examiner could test rather than naming a model class and a result. On eligibility, the Partnership is paired with a report to Congress that makes no recommendation, so no relief is coming from the Office.

More on Eligibility of software and AI claims · Inventorship and AI-assisted invention · Written description, enablement and claim scope

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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