The USPTO Wants Your Thoughts on AI Assisted Innovations

The rapid advancement and proliferation of artificial intelligence (AI) is transforming industries. It is also sparking important conversations about its implications across society. One critical area where AI is raising novel questions is in the realm of intellectual property, particularly patents. Recently, the United States Patent and Trademark Office (USPTO) issued a request for comments (RFC) seeking public input on how the increasing power and deployment of AI, including AI assisted inventions could affect key aspects of the patent system. Specifically, the USPTO wants to better understand AI’s impact on:

  1. What qualifies as “prior art” that can be used to reject patent applications.
  2. The assessment of the knowledge and capabilities of a hypothetical “person having ordinary skill in the art” (PHOSITA).
  3. Determinations of patentability made in view of the above considerations.

This RFC builds on the USPTO’s ongoing efforts to engage the innovation community and experts in discussions about IP policy issues that AI raises. It includes collaboration through the AI/ET Partnership initiative launched last year. The goal is to gather insights to help the USPTO evaluate the need for updated examination guidance. This will aid in developing such guidance and inform the USPTO’s work with the courts and Congress on these matters.

AI’s Impact on the Patent System: A Parallel to Electronic Patent Databases

To understand the potential impact of AI on the patent system, it is helpful to look at a similar technological advancement from the past: the introduction of electronic patent databases in the early 1990s. Prior to this, patent offices stored the majority of patent information only in paper format, and they restricted access to their own staff. Conducting patent searches required physically visiting these offices.

The advent of electronic patent databases, such as MicroPatent by Thomson Reuters and Smart Patents by Aurigin Systems, marked a significant milestone in the accessibility of patent information. These platforms made patent data available to a broader network of people, beyond traditional patent professionals. This increased accessibility fundamentally changed how patent offices define prior art, assess obviousness, and determine patentability. Importantly, the patent system adapted to this change by providing training and resources to patent attorneys and examiners. This ensured they could effectively utilize these new tools.

Similarly, AI is now further improving the accessibility of patent information. AI-powered patent databases make it simpler than ever to find relevant prior art documents. However, this increased accessibility also raises new challenges, particularly in the context of AI-generated disclosures.

The Challenge of AI-Generated Disclosures

One of the key concerns raised by the USPTO in its request for comments is the potential impact of AI-generated disclosures on prior art. As AI systems advance, they generate vast amounts of content, potentially creating new forms of prior art. This forces patent offices and legal experts to question whether they should treat AI-generated disclosures the same as human-generated disclosures.

On one hand, allowing AI-generated disclosures to be considered prior art could lead to an increase in useless or low-quality prior art, making it more difficult for inventors to obtain patents. On the other hand, excluding AI-generated disclosures from prior art could allow patents to be granted for inventions that were effectively already known, thanks to AI!

To address this challenge, it may be necessary to consider the level of human involvement in AI-generated inventions. For example, patent examiners could assess the patentability of an AI-created invention that combines knowledge from two different domains. They would focus on the inventor’s or assignee’s actual work in the inventive domain to determine eligibility. Another factor we should consider is how inventors create ideas, taking into account the balance between AI creativity and human involvement.

Balancing AI Creativity and Human Involvement

As AI becomes more integrated into the research and invention process, it is important to establish standards for how to conduct AI-assisted research. This includes determining the appropriate level of AI creativity and human involvement in the inventive process.

AI can be a powerful tool for generating new ideas and insights. However, it is crucial to ensure that human creativity and expertise remain central to the invention process. This balance between AI and human involvement will be key to maintaining the integrity of the patent system. It ensures that patents continue to be granted for truly novel and non-obvious inventions.

Empowering Patent Professionals with AI Expertise

To effectively navigate the challenges posed by AI-generated disclosures and AI-assisted research, patent attorneys and examiners at the PTO require adequate AI training. This training should equip them with the skills and knowledge necessary to utilize AI tools effectively. It should also enable them to discern between AI-generated and human-generated disclosures during the patent examination process. Such preparation is crucial for ensuring accurate assessments of patentability in the evolving landscape of technological innovation.

By ensuring that patent professionals are well-versed in AI technologies, the patent system can adapt to the changes brought about by AI. This adaptation mirrors how it evolved with the introduction of electronic patent databases. It will empower patent attorneys and examiners to make more informed decisions regarding prior art, obviousness, and patentability. This is especially crucial in light of AI-generated disclosures and AI-assisted research, which are increasingly shaping innovation landscapes.

Proposed Solutions and Future Directions

Addressing the challenges posed by AI for the patent system will likely require a multi-faceted approach. In the near-term, the USPTO can issue examination guidance to help create consistency and predictability. This guidance will clarify how to treat AI-generated disclosures. Longer-term, policymakers may need to update regulations or even pass new legislation.

Some potential solutions to consider include:

  1. Requiring a certain level of human involvement or validation for AI-generated disclosures to qualify as prior art.
  2. Developing AI-based tools to help applicants and examiners quickly filter relevant prior art from large datasets.
  3. Providing comprehensive AI training to patent attorneys and examiners to ensure they can effectively utilize AI tools and assess AI-generated disclosures.
  4. Exploring non-patent incentives for socially valuable AI-generated inventions, such as prizes, subsidies, or data access.

Ultimately, addressing these challenges will require collaboration between all stakeholders in the innovation ecosystem, including inventors, companies, practitioners, academics, and the public at large. The USPTO takes an important step in fostering collaboration by requesting comments. This initiative helps ensure the patent system continues to promote innovation in an AI-powered world.

Submit your inputs, by July 29th, using this link.

Looking Ahead: Future of AI in IP

The impact of AI on the patent system shares many similarities with the impact of electronic patent databases in the 1990s. Both technologies have increased the accessibility of patent information, raising new questions about prior art, obviousness, and patentability. However, AI also presents unique challenges, such as the potential for AI assisted disclosures to flood the patent system with low-quality prior art.

To address these challenges, it will be important to find the right balance between AI creativity and human involvement in the inventive process. This may require the development of new standards for AI-assisted research, as well as updates to patent examination guidelines and regulations. Patent offices must provide comprehensive AI training to patent attorneys and examiners. This training will play a crucial role in ensuring the patent system can effectively adapt to the changes AI brings.

Policymakers and patent offices must adapt the patent system to the realities of an AI-powered world. Also, they must ensure the system continues to promote innovation by rewarding truly novel and non-obvious inventions. The USPTO proactively engages with stakeholders on these issues, taking an important step toward achieving this goal. Hence, all members of the innovation community must contribute their perspectives and ideas to shape the future of AI in intellectual property, ensuring it fosters continued innovation and benefits society at large.

– By: Vaibhav Henry (CGO) and Mayur Dhingra (AI Development, COO’s Office)

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