Request for Comments Regarding Artificial Intelligence and Inventorship

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Published

February 14, 2023

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Commerce DepartmentPatent and Trademark Office

Abstract

The United States Patent and Trademark Office (USPTO) plays an important role in incentivizing and protecting innovation, including innovation enabled by artificial intelligence (AI), to ensure continued U.S. leadership in AI and other emerging technologies (ET). In June 2022, the USPTO announced the formation of the AI/ET Partnership, which provides an opportunity to bring stakeholders together through a series of engagements to share ideas, feedback, experiences, and insights on the intersection of intellectual property and AI/ET. To build on the AI/ET Partnership efforts, the USPTO is seeking stakeholder input on the current state of AI technologies and inventorship issues that may arise in view of the advancement of such technologies, especially as AI plays a greater role in the innovation process. As outlined in sections II to IV below, the USPTO is pursuing three main avenues of engagement with stakeholders to inform its future efforts on inventorship and promoting AI-enabled innovation: a series of stakeholder engagement sessions; collaboration with academia through scholarly research; and a request for written comments to the questions identified in section IV. The USPTO encourages stakeholder engagement through one or more of these avenues.

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<title>Federal Register, Volume 88 Issue 30 (Tuesday, February 14, 2023)</title>
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[Federal Register Volume 88, Number 30 (Tuesday, February 14, 2023)]
[Notices]
[Pages 9492-9495]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2023-03066]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2022-0045]

Request for Comments Regarding Artificial Intelligence and
Inventorship

AGENCY: United States Patent and Trademark Office, Department of
Commerce.

[[Page 9493]]

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) plays an
important role in incentivizing and protecting innovation, including
innovation enabled by artificial intelligence (AI), to ensure continued
U.S. leadership in AI and other emerging technologies (ET). In June
2022, the USPTO announced the formation of the AI/ET Partnership, which
provides an opportunity to bring stakeholders together through a series
of engagements to share ideas, feedback, experiences, and insights on
the intersection of intellectual property and AI/ET. To build on the
AI/ET Partnership efforts, the USPTO is seeking stakeholder input on
the current state of AI technologies and inventorship issues that may
arise in view of the advancement of such technologies, especially as AI
plays a greater role in the innovation process. As outlined in sections
II to IV below, the USPTO is pursuing three main avenues of engagement
with stakeholders to inform its future efforts on inventorship and
promoting AI-enabled innovation: a series of stakeholder engagement
sessions; collaboration with academia through scholarly research; and a
request for written comments to the questions identified in section IV.
The USPTO encourages stakeholder engagement through one or more of
these avenues.

DATES: Submissions to the special issue of the ``Journal of the Patent
and Trademark Office Society'' may be made directly to the journal at
<a href="/cdn-cgi/l/email-protection#bedbdad7cad1ccfed4cecad1cd90d1ccd9">[email&#160;protected]</a> by July 1, 2023. Comments, in general, and responses
to the questions identified in section IV must be received by May 15,
2023 to ensure consideration.

ADDRESSES: For reasons of Government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
<a href="http://www.regulations.gov">www.regulations.gov</a>. To submit comments via the portal, enter docket
number PTO-P-2022-0045 on the homepage and click ``Search.'' The site
will provide a search results page listing all documents associated
with this docket. Find a reference to this notice and click on the
``Comment Now!'' icon, complete the required fields, and enter or
attach your comments. Attachments to electronic comments will be
accepted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
Visit the Federal eRulemaking Portal website (<a href="http://www.regulations.gov">www.regulations.gov</a>)
for additional instructions on providing comments via the portal. If
electronic submission of comments is not feasible due to a lack of
access to a computer and/or the internet, please contact the USPTO
using the contact information below for special instructions.

FOR FURTHER INFORMATION CONTACT: Matthew Sked, Senior Legal Advisor,
Office of Patent Legal Administration, at 571-272-7627. Inquiries can
also be sent to <a href="/cdn-cgi/l/email-protection#68292138091a1c060d1a1b000118281d1b181c07460f071e">[email&#160;protected]</a>.

SUPPLEMENTARY INFORMATION:

I. Background

In August 2019, the USPTO issued a request for public comments on
patenting AI inventions. Among the various policy questions raised in
the notice, the USPTO requested comments on several issues involving
inventorship, such as the different ways a natural person can
contribute to the conception of an AI invention and whether current
laws and regulations involving inventorship need to be revised to
consider contributions from entities other than natural persons. See
Request for Comments on Patenting Artificial Intelligence Inventions,
84 FR 44889 (August 27, 2019). In October 2020, the USPTO published a
report titled ``Public Views on Artificial Intelligence and
Intellectual Property Policy,'' which took a comprehensive look at the
stakeholder feedback received in response to the questions posed in the
August 2019 notice.\1\ With respect to inventorship, some commenters
took the position that current AI could not invent without human
intervention and that current inventorship law is equipped to handle
inventorship that involves AI technologies. However, other commenters
indicated that AI can potentially contribute to the creation of
inventions in a variety of ways, including generating patentable
inventions to which no human has made an inventive contribution.\2\
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\1\ The full report is available at <a href="http://www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf">www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf</a>.
\2\ See, e.g., Response from Ryan Abbott (November 5, 2019) at
3-4, <a href="http://www.uspto.gov/sites/default/files/documents/Ryan-Abbott_RFC-84-FR-44889.pdf">www.uspto.gov/sites/default/files/documents/Ryan-Abbott_RFC-84-FR-44889.pdf</a>.
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Subsequently, in June 2022, the USPTO held its inaugural AI/ET
Partnership meeting. During a panel discussion on ``Inventorship and
the Advent of Machine Generated Inventions,'' there was a discussion
among the panelists about AI's increasing role in innovation. Although
there was consensus that AI cannot ``conceive'' of inventions, some
panelists contended that AI is merely a tool like any other tool used
in the inventive process, while others pointed to situations in which
AI systems can output patentable inventions or contribute at the level
of a joint inventor. Details and a recording of the inaugural AI/ET
Partnership event are available at <a href="https://www.uspto.gov/about-us/events/aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy">https://www.uspto.gov/about-us/events/aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy</a>.
While the USPTO was exploring the contours of inventorship law with
respect to AI generated inventions, the USPTO received applications
asserting that an AI machine was the inventor. On April 22, 2020, the
USPTO issued a pair of decisions denying petitions to name Device for
Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as
the inventor. The USPTO's decision explained that under current U.S.
patent laws, inventorship is limited to a natural person(s). The
USPTO's decision was upheld on September 2, 2021 in a decision from the
United States District Court for the Eastern District of Virginia.
Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021). On appeal, the
Court of Appeals for the Federal Circuit (Federal Circuit) affirmed the
holding that an inventor must be a natural person. Thaler v. Vidal, 43
F.4th 1207, 1210 (Fed. Cir. 2022). Specifically, the Federal Circuit
held that 35 U.S.C. 100(f) defines an inventor as ``the individual or,
if a joint invention, the individuals collectively who invented or
discovered the subject matter of the invention.'' The court found that
based on Supreme Court precedent, an ``individual'' ordinarily means a
human being unless Congress provided some indication that a different
meaning was intended. Id. at 1211 (citing Mohamad v. Palestinian Auth.
566 U.S. 449, 454 (2012)). Based on the finding that there is nothing
in the Patent Act to indicate Congress intended a different meaning,
and that the Act includes other language to support the conclusion that
an ``individual'' in the Act refers to a natural person, the court
concluded that an inventor must be a natural person. Id. The court
explained, however, that it was not confronted with ``the question of
whether inventions made by human beings with the assistance of AI are
eligible for patent protection.'' Thaler v. Vidal, 43 F.4th at 1213.
In addition, there is a growing consensus that AI is playing a
greater role in the innovation process (i.e., AI is being used to drive
innovation in other

[[Page 9494]]

technologies). For example, at the AI/ET Partnership meetings, the
USPTO heard that new AI models are being used in drug discovery,
personalized medicine, and chip design. As noted above, some
stakeholders have indicated that technologies using machine learning
may be able to contribute at the level of a joint inventor in some
inventions today. Further, Congress has taken note of the increased
role that AI plays in innovation. On October 27, 2022, Senators Thom
Tillis and Chris Coons called on the USPTO and the U.S. Copyright
Office to jointly create a national commission on AI to consider
changes to existing law to incentivize future AI-related innovations
and creations.
In the wake of the Thaler decision and in view of the current state
of AI and machine learning, there remains uncertainty around AI
inventorship. This uncertainty is becoming more immediate as AI,
particularly machine learning, systems make greater contributions to
innovation, as noted above. If these technologies are in fact capable
of significantly contributing to the creation of an invention, the
question arises whether the current state of the law provides patent
protection for these inventions. Accordingly, in order to foster and
promote AI-enabled innovation, the USPTO requests further stakeholder
feedback on the current state of AI technology in the invention
creation process and on how to address inventions created with
significant AI contributions.

II. Stakeholder Engagement Sessions

The USPTO will hold stakeholder engagement sessions regarding
inventorship and AI-enabled innovation. Information about these
sessions will be announced in the Federal Register and posted on the
AI/ET Partnership web page at <a href="http://www.uspto.gov/aipartnership">www.uspto.gov/aipartnership</a>.

III. Collaboration With Academia

The USPTO also seeks to foster increased academic engagement on
inventorship and AI-enabled innovation. Universities and academic
researchers play a multifaceted role in illuminating AI's role in
innovation. Many of the technical breakthroughs that underpin AI's
potential ability to contribute to the inventive process are inspired
by work in university research labs. Legal and policy scholars from
those same institutions can help explore the resulting implications
from an intellectual property perspective. The USPTO encourages
universities to support research and related academic initiatives--
particularly those that foster interdisciplinary collaboration between
AI technical researchers, legal scholars, and other contributors--that
can help address open questions in this area, such as the ones posed in
section IV of this notice, from a scholarly perspective. When
appropriate, the USPTO will consider opportunities to engage and
collaborate with such academic initiatives via the AI/ET Partnership.
The USPTO welcomes novel scholarship that can inform its future
efforts as to inventorship and AI-enabled innovation. Recognizing the
value of a diversity of perspectives, the USPTO invites both
descriptive and normative contributions from a variety of disciplines,
including but not limited to computer science, law, public policy,
economics, applied mathematics, and cognitive science. The ``Journal of
the Patent and Trademark Office Society'' plans to publish a special
issue focused on inventorship and AI-enabled innovation. Submissions
for this special issue may be made directly to the journal at
<a href="/cdn-cgi/l/email-protection#ceabaaa7baa1bc8ea4bebaa1bde0a1bca9">[email&#160;protected]</a> by July 1, 2023.\3\ The USPTO will closely monitor
scholarship published in this and other venues for helpful insights
that advance our understanding of current inventorship doctrine, the
present and future capabilities of AI systems relevant to the inventive
process, and considerations about whether the U.S. patent system should
be modified.
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\3\ The ``Journal of the Patent and Trademark Office Society''
is independently edited and published under the direction of a Board
of Governors appointed by the Patent and Trademark Office Society.
Although members of the Board of Governors and the publication staff
are employees of the USPTO, their involvement with the journal is in
a strictly personal capacity. Note that due to the limited space
available in the print volume, submission to the journal does not
guarantee publication. Selected articles must comply with the
journal's publication standards, including, but not limited to,
being an original work and substantially not duplicative of recent
or upcoming articles. The terms and conditions of the journal's
article publication process are available at <a href="http://www.jptos.org/authorcontract">www.jptos.org/authorcontract</a>.
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IV. Questions for Public Comment

The USPTO invites written responses from the public to the
following questions:
1. How is AI, including machine learning, currently being used in
the invention creation process? Please provide specific examples. Are
any of these contributions significant enough to rise to the level of a
joint inventor if they were contributed by a human?
2. How does the use of an AI system in the invention creation
process differ from the use of other technical tools?
3. If an AI system contributes to an invention at the same level as
a human who would be considered a joint inventor, is the invention
patentable under current patent laws? For example:
a. Could 35 U.S.C. 101 and 115 be interpreted such that the Patent
Act only requires the listing of the natural person(s) who invent(s),
such that inventions with additional inventive contributions from an AI
system can be patented as long as the AI system is not listed as an
inventor?
b. Does the current jurisprudence on inventorship and joint
inventorship, including the requirement of conception, support the
position that only the listing of the natural person(s) who invent(s)
is required, such that inventions with additional inventive
contributions from an AI system can be patented as long as the AI
system is not listed as an inventor?
c. Does the number of human inventors impact the answer to the
questions above?
4. Do inventions in which an AI system contributed at the same
level as a joint inventor raise any significant ownership issues? For
example:
a. Do ownership rights vest solely in the natural person(s) who
invented or do those who create, train, maintain, or own the AI system
have ownership rights as well? What about those whose information was
used to train the AI system?
b. Are there situations in which AI-generated contributions are not
owned by any entity and therefore part of the public domain?
5. Is there a need for the USPTO to expand its current guidance on
inventorship to address situations in which AI significantly
contributes to an invention? How should the significance of a
contribution be assessed?
6. Should the USPTO require applicants to provide an explanation of
contributions AI systems made to inventions claimed in patent
applications? If so, how should that be implemented, and what level of
contributions should be disclosed? Should contributions to inventions
made by AI systems be treated differently from contributions made by
other (i.e., non-AI) computer systems?
7. What additional steps, if any, should the USPTO take to further
incentivize AI-enabled innovation (i.e., innovation in which machine
learning or other computational techniques play a significant role in
the invention creation process)?
8. What additional steps, if any, should the USPTO take to mitigate
harms and risks from AI-enabled innovation? In what ways could the
USPTO promote the best practices outlined in the Blueprint for an AI
Bill

[[Page 9495]]

of Rights 4 and the AI Risk Management Framework
5 within the innovation ecosystem?
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\4\ See <a href="https://www.whitehouse.gov/ostp/ai-bill-of-rights/">https://www.whitehouse.gov/ostp/ai-bill-of-rights/</a>.
\5\ See <a href="https://www.nist.gov/itl/ai-risk-management-framework">https://www.nist.gov/itl/ai-risk-management-framework</a>.
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9. What statutory changes, if any, should be considered as to U.S.
inventorship law, and what consequences do you foresee for those
statutory changes? For example:
a. Should AI systems be made eligible to be listed as an inventor?
Does allowing AI systems to be listed as an inventor promote and
incentivize innovation?
b. Should listing an inventor remain a requirement for a U.S.
patent?
10. Are there any laws or practices in other countries that
effectively address inventorship for inventions with significant
contributions from AI systems?
11. The USPTO plans to continue engaging with stakeholders on the
intersection of AI and intellectual property. What areas of focus
(e.g., obviousness, disclosure, data protection) should the USPTO
prioritize in future engagements?

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-03066 Filed 2-13-23; 8:45 am]
BILLING CODE 3510-16-P

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