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USPTO Releases Report on Artificial Intelligence and Intellectual Property Policy

October 14, 2020

The United States Patent and Trademark Office (USPTO) recently released its long-awaited report: Public Views on Artificial Intelligence and Intellectual Property Policy. Based on commentary from approximately 200 companies, trade organizations, bar associations, law firms, academia, and others, the lengthy report examines the impact of AI on multiple types of intellectual properties, including patent, trademark, copyright, and trade secret.

While the majority of commenters believed that the current intellectual property laws are sufficiently equipped to handle the emerging issues raised by AI, clients in any technology or research-and-development focused industry should review the key findings summarized below to ensure an understanding of what is currently clear on intellectual property law and AI and what is yet to come:

Key Findings:

  • No Universal Definition of AI. Many commenters believed that there is no universally recognized definition of AI, and as such, policymakers must be careful in drafting any future legislation on this topic. For purposes of answering the questions posed by the USPTO, some commenters stated that "AI can be understood as computer functionality that mimics cognitive functions associated with the human mind."
  • The Current State of AI is Narrow. The majority of commenters believed that the current state of AI is narrow, in that AI systems have a current capability to perform only individual tasks in well-defined domains, such as image recognition or translation. Commenters believed artificial general intelligence similar to that possessed by natural persons is a theoretical possibility that could arise in the distant future.
  • AI Systems Do Not Qualify as Inventors for Patent Protection or as Authors for Copyright Protection. A majority of commenters agreed with the USPTO's stance that 35 U.S.C. § 101 limits patent protection to inventors and discoveries by natural persons, and an AI system cannot be an inventor. However, commenters also stated that a person's use of an AI system would not necessarily preclude them from qualifying as an inventor depending on the facts related to conception of that invention. Commenters also agreed with existing United States Copyright Office guidelines that an AI system cannot be an author so as to qualify for copyright protection.
  • Patent Subject Matter Eligibility Case Law for Computer-Implemented Inventions Will Apply to AI. Commenters agreed that AI should be viewed as a subset of computer-implemented inventions, and patent subject matter eligibility case law for computer-implemented inventions will apply to AI. Some commenters expressed concern that it may be more difficult for AI inventions to receive patent protection under a subject matter eligibility analysis to the extent they are characterized as unpatentable abstract ideas under Alice/Mayo case law, but other commenters noted that these inventions would be patent eligible where there is "significantly more than the abstract idea so as to transform it."
  • Showing How AI Inventions are Enabled Under 35 U.S.C. § 112(a) May be Difficult. Commenters noted that the requirement for patent applications to show how their inventions are enabled under 35 U.S.C. § 112(a) may be difficult for AI inventions. One possible solution would be to analyze enablement for AI inventions under the unpredictable arts/life sciences standard that allows for greater flexibility in meeting that requirement.
  • AI May Transform Hypothetical "Ordinary Skilled Artisan," Affecting Obviousness Analyses of Patents. Commenters also noted that AI may transform the hypothetical "ordinary skilled artisan," and therefore affect obviousness analyses of patents. An invention must not have been "obvious to a person of ordinary skill before the effective filing date of the claimed invention" to be patentable. Numerous commenters stated that the level of skill in any art has traditionally grown over time based on the introduction of new technologies, and that once conventional AI systems are widely available, these technologies will enhance the abilities of a person of ordinary skill in the art.
  • Additional Training Recommended for USPTO Examiners as AI Progresses. Commenters noted that it is difficult to determine the effects of AI on prior art (the body of knowledge known at the time a patent application is filed). In particular, commenters noted that AI may generate an unmanageable volume of prior art, which may result in difficulty for USPTO examiners to find the relevant prior art when examining patent applications. Commenters recommended additional training for examiners as AI progresses.
  • Additional Protection for Data Sets TBD. Commenters were divided on whether the new intellectual property rights should exist for data protection. Big data, i.e. extremely large sets of data that can be analyzed computationally to reveal patterns, trends, and associations, is critical for the development of AI. Commenters who agreed there should be additional protection for data sets did not provide concrete proposals, and it is likely the USPTO will need to further consult the public on this issue.
  • AI Will Improve Application Efficiency. Commenters agreed that AI will improve the efficiency of examination of patent and trademark applications.
  • Use of Copyrighted Material to "Train" AI Could Violate Protections. Commenters believed that the use of copyrighted material to "train" AI could violate copyright protection under 17 U.S.C. §106(1) and would likely not be a non-infringing fair use.
  • Current U.S. Law Deemed Sufficient to Handle Emerging Issues. In general, the majority of commenters believed that current United States law on patent and other intellectual property types is sufficiently equipped to handle the emerging issues brought on by AI. Commenters agreed that for some types of intellectual property, contract law may fill in gaps in protection. Commenters also noted that the USPTO will need to continue to review AI's effect on intellectual property laws, and there may be a need for additional guidance from the USPTO and training for its examiners.

We Can Help

If you have questions about how the emerging issues and key findings detailed above might affect your business, please contact Maslon's Intellectual Property attorneys.

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