On February 14, 2023, the U.S. Patent and Trademark Office published a notice in the Federal Register (88 Fed. Reg. 9492) requesting public comments about 1) the current state of Artificial Intelligence (AI) and Emerging Technologies (ET); and 2) associated inventorship issues that may arise with the advance of such technologies.

The notice outlines the motivation and context for the request for comments.  Namely, the notice describes the USPTO-organized AI/ET Partnership meeting held in June 2022.  During that meeting, a panel session on "Inventorship and the Advent of Machine Generated Inventions" led to conversations about AI's increasing role in innovation in areas such as drug discovery, chip design, etc.  Meeting contributors identified situations in which AI systems can output patentable inventions or contribute at the level of a joint inventor.  Additionally, the notice provides a brief summary of recent District Court and Federal Circuit cases regarding the inventorship of AI generated inventions.  Yet further, the notice references calls from Senators Coons and Tillis to create a USPTO / U.S. Copyright Office national commission to consider changes in existing law to incentivize AI-related innovations and creations.

The notice offers further stakeholder engagement sessions around AI-enabled innovations and inventorship.  Additionally, the notice encourages academic scholarship around these topics and announces plans to publish a special issue of the Journal of the Patent and Trademark Office Society.

The notice includes several questions such as:

1.  How is AI, including machine learning, currently being used in the invention creation process?
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?
4.  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?

Comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov, docket number PTO-P-2022-0045.

For additional information regarding this topic, please see:

• USPTO Alert, February 13, 2023
• USPTO webpage on Artificial Intelligence