What the Patent Bar Is Saying About the USPTO’s Call for Comments on AI Inventorship

The U.S. Patent and Trademark Office (USPTO) recently announced that it is requesting public comments on artificial intelligence and inventorship. This move shows that there may be changes as it relates to how the office considers inventions, created or partially created by AI machines.

Finnegan partner Frank DeCosta told IPWatchdog that, “The PTO’s call for comments is an important next step in determining the legal contours surrounding the protection of AI-based IP. The [U.S. Court of Appeals for the Federal Circuit’s] CAFC’s Thaler decision establishes a bright-line test providing clarity on the front end of the patenting process, but many unanswered questions remain, including those raised by the PTO. The PTO’s call for comments appears to recognize Thaler’s limitations in being able to address the many complex issues surrounding the protection of AI IP.

The record in Thaler was such that the court was able to resolve a pure question of law. That is because the applicant was declared to be AI. The more complex question that the court did not have to confront in this case is what level of reliance on AI in the invention process would deprive a human from having standing to claim inventorship?

Several of the questions posed for comment get at procedural issues regarding what can the PTO do to address the boundaries between human and artificial contributions to inventorship on the record before the PTO during patent prosecution and, in areas where the PTO has authority to act, what should the PTO do in view of the feedback received from the public.”