[Federal Register Volume 84, Number 166 (Tuesday, August 27, 2019)]
[Page 44889]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-18443]



Patent and Trademark Office

[Docket No. PTO-C-2019-0029]

Request for Comments on Patenting Artificial Intelligence 

AGENCY: United States Patent and Trademark Office, Department of 

ACTION: Request for comments.


SUMMARY: The United States Patent and Trademark Office (USPTO) is 
interested in gathering information on patent-related issues regarding 
artificial intelligence inventions for purposes of evaluating whether 
further examination guidance is needed to promote the reliability and 
predictability of patenting artificial intelligence inventions. To 
assist in gathering this information, the USPTO is publishing questions 
on artificial intelligence inventions to obtain written comments from 
the public. The questions are designed to cover a variety of topics 
from patent examination policy to whether new forms of intellectual 
property protection are needed.

DATES: Written comments must be received on or before October 11, 2019.

ADDRESSES: Written comments should be sent by email to 
[email protected]. Comments may also be submitted by postal mail 
addressed to the Director of the U.S. Patent and Trademark Office, P.O. 
Box 1450, Alexandria VA 22313-1450. Although comments may be submitted 
by postal mail, the USPTO prefers to receive comments via email.
    Because written comments and testimony will be made available for 
public inspection, information that a respondent does not desire to be 
made public, such as a phone number, should not be included in the 
testimony or written comments.

FOR FURTHER INFORMATION CONTACT: Office of the Under Secretary and 
Director of the USPTO, (571) 272-8600.

SUPPLEMENTARY INFORMATION: Artificial Intelligence (AI) is increasingly 
becoming important across a diverse spectrum of technologies and 
businesses. Because execution of AI invariably requires some form of 
computer implementation, many of the patentability issues relating to 
computer-implemented inventions (e.g., software) are germane to 
discussions of AI inventions.\1\ AI methods and systems vary in their 
technical implementation, but rely on a substantial level of 
development and training by inventors, developers, and system users.

    \1\ For a discussion of the issues unique to software patents, 
see Request for Comments and Notice of Roundtable Events for 
Partnership for Enhancement of Quality of Software-Related Patents, 
78 FR 292, 294 (Jan. 3, 2013) (reviewing unique challenges of 
software patents).

    The USPTO has been examining AI inventions for decades and has 
issued guidance in many areas that necessarily relate to AI inventions. 
Going forward, the USPTO would like to engage with the innovation 
community and experts in AI to determine whether further guidance is 
needed to promote the predictability and reliability of patenting such 
inventions and to ensure that appropriate patent protection incentives 
are in place to encourage further innovation in and around this 
critical area.
    Issues for Comment: The USPTO seeks comments on patenting 
artificial intelligence inventions. The questions enumerated below are 
a preliminary guide to aid the USPTO in collecting relevant information 
to evaluate whether further guidance is needed and assist in the 
development of any such guidance with respect to patenting artificial 
intelligence inventions. The questions should not be taken as an 
indication that the USPTO has taken a position or is predisposed to any 
particular views. USPTO welcomes comments from the public on any issues 
that they believe are relevant to this topic, and is particularly 
interested in answers to the following questions:
    1. Inventions that utilize AI, as well as inventions that are 
developed by AI, have commonly been referred to as ``AI inventions.'' 
What are elements of an AI invention? For example: The problem to be 
addressed (e.g., application of AI); the structure of the database on 
which the AI will be trained and will act; the training of the 
algorithm on the data; the algorithm itself; the results of the AI 
invention through an automated process; the policies/weights to be 
applied to the data that affects the outcome of the results; and/or 
other elements.
    2. What are the different ways that a natural person can contribute 
to conception of an AI invention and be eligible to be a named 
inventor? For example: Designing the algorithm and/or weighting 
adaptations; structuring the data on which the algorithm runs; running 
the AI algorithm on the data and obtaining the results.
    3. Do current patent laws and regulations regarding inventorship 
need to be revised to take into account inventions where an entity or 
entities other than a natural person contributed to the conception of 
an invention?
    4. Should an entity or entities other than a natural person, or 
company to which a natural person assigns an invention, be able to own 
a patent on the AI invention? For example: Should a company who trains 
the artificial intelligence process that creates the invention be able 
to be an owner?
    5. Are there any patent eligibility considerations unique to AI 
    6. Are there any disclosure-related considerations unique to AI 
inventions? For example, under current practice, written description 
support for computer-implemented inventions generally require 
sufficient disclosure of an algorithm to perform a claimed function, 
such that a person of ordinary skill in the art can reasonably conclude 
that the inventor had possession of the claimed invention. Does there 
need to be a change in the level of detail an applicant must provide in 
order to comply with the written description requirement, particularly 
for deep-learning systems that may have a large number of hidden layers 
with weights that evolve during the learning/training process without 
human intervention or knowledge?
    7. How can patent applications for AI inventions best comply with 
the enablement requirement, particularly given the degree of 
unpredictability of certain AI systems?
    8. Does AI impact the level of a person of ordinary skill in the 
art? If so, how? For example: Should assessment of the level of 
ordinary skill in the art reflect the capability possessed by AI?
    9. Are there any prior art considerations unique to AI inventions?
    10. Are there any new forms of intellectual property protections 
that are needed for AI inventions, such as data protection?
    11. Are there any other issues pertinent to patenting AI inventions 
that we should examine?
    12. Are there any relevant policies or practices from other major 
patent agencies that may help inform USPTO's policies and practices 
regarding patenting of AI inventions?

    Dated: August 21, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-18443 Filed 8-26-19; 8:45 am]