USPTO asks when an artificial intelligence contribution affects inventorship, and whether applicants should have to say so

2023-02-14USPTO

Request for Comments Regarding Artificial Intelligence and Inventorship, 88 Fed. Reg. 9492 (Feb. 14, 2023), Docket No. PTO-P-2022-0045, comments due May 15, 2023

The United States Patent and Trademark Office published a request for comments on artificial intelligence and inventorship, signed by Director Katherine K. Vidal, with comments due May 15, 2023. The notice recounts the Office's April 2020 refusal to name the DABUS system as an inventor, the Eastern District of Virginia's September 2021 decision upholding the refusal, and the Federal Circuit's 2022 holding that "an inventor must be a natural person," and observes that the Federal Circuit did not address "inventions made by human beings with the assistance of AI." The Office poses eleven questions. They ask how artificial intelligence, including machine learning, is used in creating inventions and whether any of those contributions, if made by a human, would rise to the level of joint inventorship; how use of such a system differs from use of other technical tools; whether an invention is patentable under current law if a system contributes at a joint-inventor level; whether there is "a need for the USPTO to expand its current guidance on inventorship"; whether the Office should "require applicants to provide an explanation of contributions AI systems made" to claimed inventions; whether ownership questions arise, including whether some machine-generated contributions fall into the public domain; whether statutory change is needed, including whether listing an inventor should remain a requirement for a patent; and which focus areas the Office should prioritize next.

What it changesThe questions the Office is asking are the questions an invention disclosure form should already ask, and the answer is to revise the form now rather than wait for a rule. For any invention made with a model in the loop, the form should record which human framed the problem, which human wrote or selected the prompts and why, what the model proposed, which proposals a human selected, modified or rejected and on what basis, and who recognized that a particular output solved the problem. That record is what conception looks like under the Pannu factors, it is what the Office will need if it adopts a disclosure requirement, and it costs nothing to keep. Portfolios should also be reviewed for applications already on file where a model contributed, so that the inventorship declarations can be checked against the actual record before any guidance arrives. The request creates no obligation; it says where the Office's attention is.

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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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