[Federal Register Volume 88, Number 30 (Tuesday, February 14, 2023)]
[Notices]
[Pages 9492-9495]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-03066]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2022-0045]


Request for Comments Regarding Artificial Intelligence and 
Inventorship

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

[[Page 9493]]


ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) plays an 
important role in incentivizing and protecting innovation, including 
innovation enabled by artificial intelligence (AI), to ensure continued 
U.S. leadership in AI and other emerging technologies (ET). In June 
2022, the USPTO announced the formation of the AI/ET Partnership, which 
provides an opportunity to bring stakeholders together through a series 
of engagements to share ideas, feedback, experiences, and insights on 
the intersection of intellectual property and AI/ET. To build on the 
AI/ET Partnership efforts, the USPTO is seeking stakeholder input on 
the current state of AI technologies and inventorship issues that may 
arise in view of the advancement of such technologies, especially as AI 
plays a greater role in the innovation process. As outlined in sections 
II to IV below, the USPTO is pursuing three main avenues of engagement 
with stakeholders to inform its future efforts on inventorship and 
promoting AI-enabled innovation: a series of stakeholder engagement 
sessions; collaboration with academia through scholarly research; and a 
request for written comments to the questions identified in section IV. 
The USPTO encourages stakeholder engagement through one or more of 
these avenues.

DATES: Submissions to the special issue of the ``Journal of the Patent 
and Trademark Office Society'' may be made directly to the journal at 
[email protected] by July 1, 2023. Comments, in general, and responses 
to the questions identified in section IV must be received by May 15, 
2023 to ensure consideration.

ADDRESSES: For reasons of Government efficiency, comments must be 
submitted through the Federal eRulemaking Portal at 
www.regulations.gov. To submit comments via the portal, enter docket 
number PTO-P-2022-0045 on the homepage and click ``Search.'' The site 
will provide a search results page listing all documents associated 
with this docket. Find a reference to this notice and click on the 
``Comment Now!'' icon, complete the required fields, and enter or 
attach your comments. Attachments to electronic comments will be 
accepted in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format. Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.
    Visit the Federal eRulemaking Portal website (www.regulations.gov) 
for additional instructions on providing comments via the portal. If 
electronic submission of comments is not feasible due to a lack of 
access to a computer and/or the internet, please contact the USPTO 
using the contact information below for special instructions.

FOR FURTHER INFORMATION CONTACT: Matthew Sked, Senior Legal Advisor, 
Office of Patent Legal Administration, at 571-272-7627. Inquiries can 
also be sent to [email protected].

SUPPLEMENTARY INFORMATION: 

I. Background

    In August 2019, the USPTO issued a request for public comments on 
patenting AI inventions. Among the various policy questions raised in 
the notice, the USPTO requested comments on several issues involving 
inventorship, such as the different ways a natural person can 
contribute to the conception of an AI invention and whether current 
laws and regulations involving inventorship need to be revised to 
consider contributions from entities other than natural persons. See 
Request for Comments on Patenting Artificial Intelligence Inventions, 
84 FR 44889 (August 27, 2019). In October 2020, the USPTO published a 
report titled ``Public Views on Artificial Intelligence and 
Intellectual Property Policy,'' which took a comprehensive look at the 
stakeholder feedback received in response to the questions posed in the 
August 2019 notice.\1\ With respect to inventorship, some commenters 
took the position that current AI could not invent without human 
intervention and that current inventorship law is equipped to handle 
inventorship that involves AI technologies. However, other commenters 
indicated that AI can potentially contribute to the creation of 
inventions in a variety of ways, including generating patentable 
inventions to which no human has made an inventive contribution.\2\
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    \1\ The full report is available at www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf.
    \2\ See, e.g., Response from Ryan Abbott (November 5, 2019) at 
3-4, www.uspto.gov/sites/default/files/documents/Ryan-Abbott_RFC-84-FR-44889.pdf.
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    Subsequently, in June 2022, the USPTO held its inaugural AI/ET 
Partnership meeting. During a panel discussion on ``Inventorship and 
the Advent of Machine Generated Inventions,'' there was a discussion 
among the panelists about AI's increasing role in innovation. Although 
there was consensus that AI cannot ``conceive'' of inventions, some 
panelists contended that AI is merely a tool like any other tool used 
in the inventive process, while others pointed to situations in which 
AI systems can output patentable inventions or contribute at the level 
of a joint inventor. Details and a recording of the inaugural AI/ET 
Partnership event are available at https://www.uspto.gov/about-us/events/aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy.
    While the USPTO was exploring the contours of inventorship law with 
respect to AI generated inventions, the USPTO received applications 
asserting that an AI machine was the inventor. On April 22, 2020, the 
USPTO issued a pair of decisions denying petitions to name Device for 
Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as 
the inventor. The USPTO's decision explained that under current U.S. 
patent laws, inventorship is limited to a natural person(s). The 
USPTO's decision was upheld on September 2, 2021 in a decision from the 
United States District Court for the Eastern District of Virginia. 
Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021). On appeal, the 
Court of Appeals for the Federal Circuit (Federal Circuit) affirmed the 
holding that an inventor must be a natural person. Thaler v. Vidal, 43 
F.4th 1207, 1210 (Fed. Cir. 2022). Specifically, the Federal Circuit 
held that 35 U.S.C. 100(f) defines an inventor as ``the individual or, 
if a joint invention, the individuals collectively who invented or 
discovered the subject matter of the invention.'' The court found that 
based on Supreme Court precedent, an ``individual'' ordinarily means a 
human being unless Congress provided some indication that a different 
meaning was intended. Id. at 1211 (citing Mohamad v. Palestinian Auth. 
566 U.S. 449, 454 (2012)). Based on the finding that there is nothing 
in the Patent Act to indicate Congress intended a different meaning, 
and that the Act includes other language to support the conclusion that 
an ``individual'' in the Act refers to a natural person, the court 
concluded that an inventor must be a natural person. Id. The court 
explained, however, that it was not confronted with ``the question of 
whether inventions made by human beings with the assistance of AI are 
eligible for patent protection.'' Thaler v. Vidal, 43 F.4th at 1213.
    In addition, there is a growing consensus that AI is playing a 
greater role in the innovation process (i.e., AI is being used to drive 
innovation in other

[[Page 9494]]

technologies). For example, at the AI/ET Partnership meetings, the 
USPTO heard that new AI models are being used in drug discovery, 
personalized medicine, and chip design. As noted above, some 
stakeholders have indicated that technologies using machine learning 
may be able to contribute at the level of a joint inventor in some 
inventions today. Further, Congress has taken note of the increased 
role that AI plays in innovation. On October 27, 2022, Senators Thom 
Tillis and Chris Coons called on the USPTO and the U.S. Copyright 
Office to jointly create a national commission on AI to consider 
changes to existing law to incentivize future AI-related innovations 
and creations.
    In the wake of the Thaler decision and in view of the current state 
of AI and machine learning, there remains uncertainty around AI 
inventorship. This uncertainty is becoming more immediate as AI, 
particularly machine learning, systems make greater contributions to 
innovation, as noted above. If these technologies are in fact capable 
of significantly contributing to the creation of an invention, the 
question arises whether the current state of the law provides patent 
protection for these inventions. Accordingly, in order to foster and 
promote AI-enabled innovation, the USPTO requests further stakeholder 
feedback on the current state of AI technology in the invention 
creation process and on how to address inventions created with 
significant AI contributions.

II. Stakeholder Engagement Sessions

    The USPTO will hold stakeholder engagement sessions regarding 
inventorship and AI-enabled innovation. Information about these 
sessions will be announced in the Federal Register and posted on the 
AI/ET Partnership web page at www.uspto.gov/aipartnership.

III. Collaboration With Academia

    The USPTO also seeks to foster increased academic engagement on 
inventorship and AI-enabled innovation. Universities and academic 
researchers play a multifaceted role in illuminating AI's role in 
innovation. Many of the technical breakthroughs that underpin AI's 
potential ability to contribute to the inventive process are inspired 
by work in university research labs. Legal and policy scholars from 
those same institutions can help explore the resulting implications 
from an intellectual property perspective. The USPTO encourages 
universities to support research and related academic initiatives--
particularly those that foster interdisciplinary collaboration between 
AI technical researchers, legal scholars, and other contributors--that 
can help address open questions in this area, such as the ones posed in 
section IV of this notice, from a scholarly perspective. When 
appropriate, the USPTO will consider opportunities to engage and 
collaborate with such academic initiatives via the AI/ET Partnership.
    The USPTO welcomes novel scholarship that can inform its future 
efforts as to inventorship and AI-enabled innovation. Recognizing the 
value of a diversity of perspectives, the USPTO invites both 
descriptive and normative contributions from a variety of disciplines, 
including but not limited to computer science, law, public policy, 
economics, applied mathematics, and cognitive science. The ``Journal of 
the Patent and Trademark Office Society'' plans to publish a special 
issue focused on inventorship and AI-enabled innovation. Submissions 
for this special issue may be made directly to the journal at 
[email protected] by July 1, 2023.\3\ The USPTO will closely monitor 
scholarship published in this and other venues for helpful insights 
that advance our understanding of current inventorship doctrine, the 
present and future capabilities of AI systems relevant to the inventive 
process, and considerations about whether the U.S. patent system should 
be modified.
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    \3\ The ``Journal of the Patent and Trademark Office Society'' 
is independently edited and published under the direction of a Board 
of Governors appointed by the Patent and Trademark Office Society. 
Although members of the Board of Governors and the publication staff 
are employees of the USPTO, their involvement with the journal is in 
a strictly personal capacity. Note that due to the limited space 
available in the print volume, submission to the journal does not 
guarantee publication. Selected articles must comply with the 
journal's publication standards, including, but not limited to, 
being an original work and substantially not duplicative of recent 
or upcoming articles. The terms and conditions of the journal's 
article publication process are available at www.jptos.org/authorcontract.
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IV. Questions for Public Comment

    The USPTO invites written responses from the public to the 
following questions:
    1. How is AI, including machine learning, currently being used in 
the invention creation process? Please provide specific examples. Are 
any of these contributions significant enough to rise to the level of a 
joint inventor if they were contributed by a human?
    2. How does the use of an AI system in the invention creation 
process differ from the use of other technical tools?
    3. If an AI system contributes to an invention at the same level as 
a human who would be considered a joint inventor, is the invention 
patentable under current patent laws? For example:
    a. Could 35 U.S.C. 101 and 115 be interpreted such that the Patent 
Act only requires the listing of the natural person(s) who invent(s), 
such that inventions with additional inventive contributions from an AI 
system can be patented as long as the AI system is not listed as an 
inventor?
    b. Does the current jurisprudence on inventorship and joint 
inventorship, including the requirement of conception, support the 
position that only the listing of the natural person(s) who invent(s) 
is required, such that inventions with additional inventive 
contributions from an AI system can be patented as long as the AI 
system is not listed as an inventor?
    c. Does the number of human inventors impact the answer to the 
questions above?
    4. Do inventions in which an AI system contributed at the same 
level as a joint inventor raise any significant ownership issues? For 
example:
    a. Do ownership rights vest solely in the natural person(s) who 
invented or do those who create, train, maintain, or own the AI system 
have ownership rights as well? What about those whose information was 
used to train the AI system?
    b. Are there situations in which AI-generated contributions are not 
owned by any entity and therefore part of the public domain?
    5. Is there a need for the USPTO to expand its current guidance on 
inventorship to address situations in which AI significantly 
contributes to an invention? How should the significance of a 
contribution be assessed?
    6. Should the USPTO require applicants to provide an explanation of 
contributions AI systems made to inventions claimed in patent 
applications? If so, how should that be implemented, and what level of 
contributions should be disclosed? Should contributions to inventions 
made by AI systems be treated differently from contributions made by 
other (i.e., non-AI) computer systems?
    7. What additional steps, if any, should the USPTO take to further 
incentivize AI-enabled innovation (i.e., innovation in which machine 
learning or other computational techniques play a significant role in 
the invention creation process)?
    8. What additional steps, if any, should the USPTO take to mitigate 
harms and risks from AI-enabled innovation? In what ways could the 
USPTO promote the best practices outlined in the Blueprint for an AI 
Bill

[[Page 9495]]

of Rights 4 and the AI Risk Management Framework 
5 within the innovation ecosystem?
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    \4\ See https://www.whitehouse.gov/ostp/ai-bill-of-rights/.
    \5\ See https://www.nist.gov/itl/ai-risk-management-framework.
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    9. What statutory changes, if any, should be considered as to U.S. 
inventorship law, and what consequences do you foresee for those 
statutory changes? For example:
    a. Should AI systems be made eligible to be listed as an inventor? 
Does allowing AI systems to be listed as an inventor promote and 
incentivize innovation?
    b. Should listing an inventor remain a requirement for a U.S. 
patent?
    10. Are there any laws or practices in other countries that 
effectively address inventorship for inventions with significant 
contributions from AI systems?
    11. The USPTO plans to continue engaging with stakeholders on the 
intersection of AI and intellectual property. What areas of focus 
(e.g., obviousness, disclosure, data protection) should the USPTO 
prioritize in future engagements?

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-03066 Filed 2-13-23; 8:45 am]
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