Upcoming public listening sessions announced by the USPTO will give stakeholders the opportunity to express their views on AI inventorship for patents. An East Coast public listening session will be held on April 25, 2023, from 10:30 a.m. ET to 3:30 p.m. ET at the National Inventors Hall of Fame Museum, USPTO Headquarters, 600 Dulany St. Alexandria, VA 22314. A second, West Coast session will be held on May 8, 2023, from 10:00 a.m. PT to 3:00 p.m. PT at Stanford University, Paul Brest Hall, 555 Salvatierra Walk, Stanford, CA 94305. Both sessions allow for virtual attendance. The purpose of the listening sessions is to seek stakeholder input on the current state of AI technologies and inventorship issues that may result from their advancement, as set forth in the questions posed in the Federal Register Notice of February 14, 2023 (the “February 14, 2023 Notice”).1
The questions in the February 14, 2023 Notice were prompted by the Federal Circuit’s decision in Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022). There, the Federal Circuit affirmed a district court’s ruling upholding the USPTO’s decision to deny petitions to name Device for Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as a patent inventor. Based on Supreme Court precedent and language in the Patent Act, the Federal Circuit affirmed the holding that an inventor must be a natural person. Id. at 1211. But the court also made clear that it was not addressing “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Id. at 1213.2
In the wake of Thaler v. Vidal, the February 14 Notice seeks written comment on the following questions by May 15, 2023, which no doubt will be covered in the listening sessions as well:
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:
- 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?
- 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?
- 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:
- 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?
- 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 of Rights and the AI Risk Management Framework within the innovation ecosystem?
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:
- 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?
- 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?
The deadlines for registering to speak at or attend the listening sessions are coming up quickly. For the East Coast session, which is free and open to the public, the deadline to request to speak at the session is April 20th and the deadline to register to attend the session physically or virtually is April 24th.3 For the West Coast session, which also is free and open to the public, the deadline to request to speak or attend in-person is May 2, and the deadline to register to attend virtually is May 7.4 Reed Smith plans to attend the listening sessions and monitor further developments in response to the February 14, 2023 Notice.
- Request for Comments Regarding Artificial Intelligence and Inventorship
- Thaler has petitioned the U.S. Supreme Court to review this decision, arguing that an “individual” inventor may refer to a single entity as opposed to a collective such as a corporation or government. For a summary of Thaler v. Vidal, see 'Sorry, DABUS. AI cannot be an inventor on a U.S. Patent'
- AI Inventorship Listening Session - East Coast
- AI Inventorship Listening Session - West Coast
Client Alert 2023-092
