The artificial intelligence Executive Order orders inventorship guidance in 120 days and invites eligibility guidance in 270

2023-10-30US Policy

Executive Order 14110, "Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence," signed Oct. 30, 2023, 88 Fed. Reg. 75191 (Nov. 1, 2023), Section 5.2(c)

Executive Order 14110, signed by President Biden, sets a government-wide program for artificial intelligence and includes a patent section. Section 5.2(c) directs the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, within 120 days of the order, to publish guidance to examiners and applicants addressing "inventorship and the use of AI, including generative AI, in the inventive process," with "illustrative examples in which AI systems play different roles in inventive processes" and how inventorship should be analyzed in each. Within 270 days the Director is to issue additional guidance to examiners and applicants "to address other considerations at the intersection of AI and IP," which "could include, as the USPTO Director deems necessary, updated guidance on patent eligibility to address innovation in AI and critical and emerging technologies." A third clause directs the Director, after consulting the Director of the United States Copyright Office, to recommend executive actions on copyright and artificial intelligence. Elsewhere, Section 4.2 requires companies developing dual-use foundation models to report training runs, red-team results and safety measures to the Department of Commerce, with an interim threshold of models trained on more than 10^26 integer or floating-point operations, and Section 3 defines a dual-use foundation model as one with at least tens of billions of parameters that is applicable across a wide range of contexts.

What it changesThe inventorship question for artificial-intelligence-assisted inventions now has a date: examiner guidance with worked examples is due by February 27, 2024, and the eligibility guidance, if the Director chooses to issue it, by July 26, 2024. Thaler v. Vidal already requires a natural person as inventor, so the coming guidance will be about how much a human must contribute when a model proposed the solution. An in-house program should not hold filings for it; the grace period and the prior art do not wait, and guidance of this kind applies to pending applications anyway. What the program should do now is write down, for every disclosure where a model was used, which person framed the problem, chose the inputs, selected among outputs and recognized the result, because that record is what any contribution-based guidance will ask for. Companies with a view on eligibility should prepare comments now rather than when a comment period opens.

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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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