[Federal Register Volume 84, Number 166 (Tuesday, August 27, 2019)]
[Notices]
[Page 44889]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-18443]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-C-2019-0029]
Request for Comments on Patenting Artificial Intelligence
Inventions
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Request for comments.
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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.
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\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).
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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
inventions?
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]
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