The Cyberlaw Clinic worked with the Public Interest Patent Law Institute (“PIPLI”) to file comments (.pdf) with the United States Patent and Trademark Office, expressing PIPLI’s views on patents and artificial intelligence. The comments respond to the USPTO’s guidance on “Inventorship Guidance on AI-Assisted Inventions,” PTO-P-2023-0043-0001, as to which the USPTO solicited comments earlier this year.
Issued pursuant to President Biden’s October 2023 “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence,” the USPTO’s guidance aimed to provide clarity regarding the approach that the USPTO will adopt in analyzing inventorship issues as AI systems are increasingly used in the innovation process. The guidance underscored the USPTO’s commitment to granting patent protection only for human contributions and offered some specific mechanisms through which it aimed to enforce that limitation.
PIPLI’s comments endorsed the USPTO’s approach at a high level, noting that the requirement that a human contribute to an invention is necessary given the inventorship enablement requirement set forth in the Patent Act, 35 U.S.C. § 112. PIPLI raised concerns about whether the USPTO’s proposed procedural guardrails go far enough and urged that patent examiners be given additional tools to deploy when engaging with patent applicants, allowing them to adequately investigate and determine the role played by artificial intelligence with respect to any given invention.
Spring 2024 Cyberlaw Clinic students Jennifer Ding and Sophia Lam worked on the comments, collaborating closely with PIPLI’s executive director, Alex Moss, and with Chris Bavitz at the Clinic. PIPLI and the Clinic look forward to future opportunities to engage with the USPTO on the important topic of AI and intellectual property protection.