[Federal Register Volume 89, Number 84 (Tuesday, April 30, 2024)]
[Notices]
[Pages 34217-34220]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-08969]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2023-0044]


Request for Comments Regarding the Impact of the Proliferation of 
Artificial Intelligence on Prior Art, the Knowledge of a Person Having 
Ordinary Skill in the Art, and Determinations of Patentability Made in 
View of the Foregoing

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 or 
Office) seeks public comments regarding the impact of the proliferation 
of artificial intelligence (AI) on prior art, the knowledge of a person 
having ordinary skill in the art (PHOSITA), and determinations of 
patentability made in view of the foregoing. The increasing power and 
deployment of AI has the potential to provide tremendous societal and 
economic benefits and foster a new wave of innovation and creativity 
while also posing novel challenges and opportunities for intellectual 
property (IP) policy. Through the AI and Emerging Technologies 
Partnership (AI/ET Partnership), the USPTO has been actively engaging 
with the innovation community and AI experts on IP policy in view of 
AI. To build on these efforts, the USPTO is requesting written public 
comments on how the proliferation of AI could affect certain 
evaluations made by the Office, including what qualifies as prior art, 
the assessment of the level of skill of a PHOSITA, and determinations 
of patentability made in view of these evaluations. The USPTO expects 
that the responses received will help the Office evaluate the need for 
further guidance on these matters, aid in the development of any such 
guidance, and help inform the USPTO's work in the courts and in 
providing technical advice to Congress.

DATES: Written comments must be received on or before July 29, 2024, to 
ensure consideration.

ADDRESSES: Comments must be submitted through the Federal eRulemaking 
Portal at www.regulations.gov. To submit comments via the portal, enter 
docket number PTO-P-2023-0044 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 document and 
select the ``Comment'' icon, complete the required fields, and enter or 
attach your comments. Attachments to electronic comments will be 
accepted in ADOBE[supreg] portable document format (PDF) 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 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: Steven J. Fulk, Legal Advisor, at 571-
270-0072; Nalini Mummalaneni, Senior Legal Advisor, at 571-270-1647; or 
Matthew Sked, Senior Legal Advisor, at 571-272-7627, all with the 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patents.

SUPPLEMENTARY INFORMATION:

I. Background

    The USPTO has held several stakeholder interaction sessions and has 
issued requests for comments (RFCs) to seek public feedback regarding 
AI's impact on patent policy issues.\1\ In August 2019, the USPTO 
issued an RFC on patenting AI inventions.\2\ Among the various policy 
questions raised in this previous RFC, the USPTO requested comments on 
AI's impact on a PHOSITA and prior art considerations unique to AI 
inventions.\3\ In October 2020, the USPTO published a report titled 
``Public Views on Artificial Intelligence and Intellectual Property 
Policy,'' which provided a comprehensive look at the stakeholder 
feedback received in response to the questions posed in the August 2019 
RFC.\4\ That report explained that stakeholders had varying views on 
how AI would impact obviousness determinations and how to assess a 
PHOSITA's level of skill.\5\ Some commenters stated that AI machines 
are not ``persons,'' and therefore, AI would

[[Page 34218]]

not affect the PHOSITA assessment.\6\ Additional commenters believed 
the present framework for assessing a PHOSITA's level of skill is 
sufficient to determine the impact of AI in a particular field.\7\ Many 
commenters agreed that the increasing use of AI would affect how the 
USPTO and the courts assess the legal hypothetical standard of a 
PHOSITA.\8\ Others indicated ``the level of skill in any art has 
traditionally grown over time based on the introduction of new 
technologies and that `once conventional AI systems become widely 
available . . . such accessibility would be expected to enhance the 
abilities of a [PHOSITA].' '' \9\ However, some commenters noted that 
``such wide prevalence of AI systems has not yet permeated all fields 
and counseled against declaring that all fields of innovation are now 
subject to the application of `conventional AI.' '' \10\ Additionally, 
while most commenters believed there were no prior art considerations 
unique to AI, some commenters indicated there may be some unique 
considerations, such as the difficulty in finding prior art related to 
the AI technology itself (e.g., finding source code for AI technology) 
and the proliferation of AI-generated prior art.\11\ Overall, 
commenters confirmed that more engagement with the USPTO was needed 
regarding how AI impacts prior art and the level of skill of a PHOSITA.
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    \1\ See USPTO Artificial Intelligence web page at www.uspto.gov/initiatives/artificial-intelligence.
    \2\ Request for Comments on Patenting Artificial Intelligence 
Inventions, 84 FR 44889 (August 27, 2019). Question 1 of this RFC 
noted, ``Inventions that utilize AI, as well as inventions that are 
developed by AI, have commonly been referred to as `AI inventions.' 
''
    \3\ Id.
    \4\ The full report is available at www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf (October 2020 AI 
Report).
    \5\ October 2020 AI Report at 11-13.
    \6\ Id. at 13.
    \7\ Id. at 12.
    \8\ Id. at iii.
    \9\ Id.
    \10\ Id. at 13.
    \11\ Id. at 13-14.
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    In June 2022, the USPTO launched the AI/ET Partnership.\12\ At the 
June 29, 2022, inaugural AI/ET Partnership meeting,\13\ panelists 
commented that the level of skill of a PHOSITA for obviousness 
determinations would be higher in view of the availability of AI.\14\ 
One panelist argued that it may be appropriate to raise the bar for the 
level of skill of a PHOSITA particularly where the use of AI is common 
practice. That panelist also noted that AI might be able to make use of 
prior art from fields that humans may not have been expected to find or 
use, and that the universe of prior art would expand as AI advances. 
Another panelist commented that obviousness is always determined in 
view of prior art references and that the extent to which AI 
developments should affect the obviousness standard was unclear. After 
this June 2022 inaugural event, the Office held several additional AI/
ET Partnership events in 2022 and 2023.\15\
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    \12\ Events for the Artificial Intelligence and Emerging 
Technologies Partnership, 87 FR 34669 (June 7, 2022).
    \13\ A video of the meeting is available at www.uspto.gov/about-us/events/aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy.
    \14\ A higher level of ordinary skill in the art would more 
likely support the conclusion that a PHOSITA would recognize that 
the differences between a claimed invention and the prior art are 
such that the claimed invention would have been obvious. See, e.g., 
In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) (GPAC); see also 
Section III of this notice.
    \15\ See AI and Emerging Technology Partnership engagement and 
events web page at www.uspto.gov/initiatives/artificial-intelligence/ai-and-emerging-technology-partnership-engagement-and-events.
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    In February 2023, the USPTO issued an RFC on AI and 
inventorship.\16\ This request focused on questions of inventorship, 
but it also asked what other areas of focus the USPTO should prioritize 
in future engagements. Many commenters indicated that the USPTO should 
investigate how AI impacts obviousness determinations and the PHOSITA 
assessment.\17\ For example, some commenters stated that an invention 
developed with the use of AI should not render that invention obvious 
or more likely to be obvious.\18\ Conversely, other commenters 
indicated that AI contributions to an invention should be per se 
obvious or that the AI contribution should have a rebuttable 
presumption of obviousness.\19\ Commenters also indicated that AI has 
the potential to generate a vast amount of prior art, which may have an 
impact on the Office's anticipation and obviousness determinations.\20\
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    \16\ Request for Comments Regarding Artificial Intelligence and 
Inventorship, 88 FR 9492 (February 14, 2023) (February 2023 AI RFC).
    \17\ Comments in response to the February 2023 AI RFC are 
available at www.regulations.gov/docket/PTO-P-2022-0045.
    \18\ See, e.g., Comment PTO-P2022-0045-0052 (AUTM).
    \19\ See, e.g., Comment PTO-P2022-0045-0057 (Alliance for 
Automotive Innovation), and Comment PTO-P2022-0045-0063 (The 
Computer & Communications Industry Association and The Public 
Innovation Project).
    \20\ See, e.g., Comment PTO-P2022-0045-0013 (James Gatto).
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    The increasing power and deployment of AI has the potential to 
provide tremendous societal and economic benefits and foster a new wave 
of innovation and creativity while also posing novel challenges and 
opportunities for IP policy. Based on the feedback that the USPTO has 
received from our stakeholders on the importance of AI's impact on 
prior art, on the knowledge of a PHOSITA, and on other patentability 
considerations, the Office plans to more deeply engage with 
stakeholders and is requesting further comments in these areas. This 
RFC builds on the USPTO's recent AI-related efforts associated with 
Executive Order 14110,\21\ including the ``Inventorship Guidance for 
AI-Assisted Inventions'' \22\ published on February 13, 2024.
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    \21\ Executive Order on the Safe, Secure, and Trustworthy 
Development and Use of Artificial Intelligence, Executive Order 
14110, 88 FR 75191 (November 1, 2023).
    \22\ Inventorship Guidance for AI-Assisted Inventions, 89 FR 
10043 (February 13, 2024).
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    Section II of this notice provides an overview of prior art 
considerations and discusses some concerns relevant to AI-generated 
prior art. Section III discusses the current PHOSITA assessment as it 
is applied by the USPTO and the courts. Sections II and III are 
intended only to provide context for the questions presented in this 
notice. This RFC is not a guidance document and does not announce any 
new Office practice or procedure. Section IV presents questions to the 
public on the impact of AI on prior art and the PHOSITA assessment.

II. Considerations for the Impact of AI on Prior Art

    ``A claimed invention may be rejected under 35 U.S.C. 102 when the 
invention is anticipated (or is `not novel') over a disclosure that is 
available as prior art. To reject a claim as anticipated by a [prior 
art] reference, the disclosure must teach every element required by the 
claim under its broadest reasonable interpretation.'' \23\ Under 35 
U.S.C. 102(a)(1), a person is not entitled to a patent if the claimed 
invention was disclosed--including being patented; described in a 
printed publication; or in public use, on sale, or otherwise available 
to the public--before the effective filing date of the claimed 
invention (i.e., the disclosure is a ``prior art disclosure''). Under 
35 U.S.C. 102(a)(2), a person is not entitled to a patent if ``the 
claimed invention was described in a patent issued under [35 U.S.C. 
151], or in an application for patent published or deemed published 
under [35 U.S.C. 122(b)], in which the patent or application, as the 
case may be, names another inventor and was effectively filed before 
the effective filing date of the claimed invention.'' A disclosure that 
is a prior art reference under 35 U.S.C. 102 may also serve as a basis 
for obviousness under 35 U.S.C. 103.\24\
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    \23\ Manual of Patent Examining Procedure (MPEP) 2131.
    \24\ MPEP 2141.01, subsection I; MPEP 2141.01(a).
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    To qualify as a ``printed publication'' under 35 U.S.C. 102(a)(1), 
a prior art reference must have been publicly accessible, i.e., 
``available to the extent that persons interested and ordinarily 
skilled in the subject matter or art, exercising reasonable diligence, 
can

[[Page 34219]]

locate [the reference].'' \25\ AI may be used to create vast numbers of 
disclosures that may have been generated without any human 
contribution, supervision, or review. Because a PHOSITA is ``a 
hypothetical person who is presumed to have known the relevant art at 
the relevant time,'' \26\ the proliferation of AI-generated disclosures 
may question the soundness of presuming that a PHOSITA knew of relevant 
AI-generated art when the vast amount of AI-generated disclosures was 
never reviewed by a human. Further, as suggested by stakeholders, there 
is a question whether AI-generated disclosures, especially those with 
no human input, review, or validation, should qualify as prior art 
disclosures and potentially preclude human-created inventions from 
being patented.
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    \25\ MPEP 2128, subsection I (quoting In re Wyer, 655 F.2d 221, 
210 USPQ 790 (C.C.P.A. 1981) (quoting I.C.E. Corp. v. Armco Steel 
Corp., 250 F. Supp. 738, 743, 148 USPQ 537, 540 (SDNY 1966))).
    \26\ MPEP 2141.03, subsection I.
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    Additionally, ``[w]hen the [prior art] reference relied on 
expressly anticipates or makes obvious all of the elements of the 
claimed invention, the reference is presumed to be operable,'' 
regardless of the type of prior art (e.g., patent, printed publication, 
or other prior art disclosure), and the burden is on the applicant to 
rebut the presumption of operability.\27\ The presumption is that a 
public disclosure provides a description that enables the public to 
make and use the disclosure. The presumption does not (at least 
currently) distinguish between who or what made the disclosure, which 
prompts the question whether AI-generated disclosures (that have not 
been prepared and reviewed by a human) should be afforded the same 
rebuttable presumption that they are operable and enabled. In view of 
the above issues, the proliferation of AI-generated prior art raises 
questions on which the Office seeks input from stakeholders.
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    \27\ MPEP 2121, subsections I and II. Note, however, ``[e]ven if 
a reference discloses an inoperative device, it is prior art for all 
that it teaches'' and ``may qualify as prior art for the purpose of 
determining obviousness under 35 U.S.C. 103.'' MPEP 2121.01, 
subsection II.
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III. Considerations for the Impact of AI on the Knowledge of a PHOSITA

    ``A patent for a claimed invention may not be obtained . . . if the 
differences between the claimed invention and the prior art are such 
that the claimed invention as a whole would have been obvious before 
the effective filing date of the claimed invention to a person having 
ordinary skill in the art to which the claimed invention pertains.'' 
\28\ Thus, obviousness is to be determined with regard to a 
PHOSITA.\29\ As reiterated by the Supreme Court in KSR International 
Co. v. Teleflex Inc.\30\ (KSR), obviousness is a question of law based 
on underlying factual inquiries established in Graham v. John Deere Co. 
(Graham).\31\ The Graham factual inquiries are: (1) determining the 
scope and content of the prior art, (2) ascertaining the differences 
between the claimed invention and the prior art, (3) resolving the 
level of ordinary skill in the art, and (4) evaluating any objective 
evidence of nonobviousness.\32\ Once these factual findings are made, a 
determination of obviousness should focus on ``what a person of 
ordinary skill in the pertinent art would have known at the relevant 
time, and on what such a person would have reasonably expected to have 
been able to do in view of that knowledge.'' \33\
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    \28\ 35 U.S.C. 103 (emphasis added).
    \29\ MPEP 2141.
    \30\ 550 U.S. 398, 406 (2007).
    \31\ 383 U.S. 1, 17-18 (1966). The Office recently published 
``Updated Guidance for Making a Proper Determination of 
Obviousness'' (89 FR 14449 (February 27, 2024)), which provides a 
review of the flexible approach to determining obviousness required 
by KSR.
    \32\ MPEP 2141, subsection II.
    \33\ Id.
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    Likewise, a patent ``specification shall contain a written 
description of the invention, and of the manner and process of making 
and using it, in such full, clear, concise, and exact terms as to 
enable any person skilled in the art to which it pertains . . . to make 
and use the same.'' \34\ The courts have analyzed written description 
and enablement issues from the vantage point of a PHOSITA.\35\ However, 
the role of a PHOSITA goes beyond these statutory considerations for 
obviousness under 35 U.S.C. 103 and the requirements under 35 U.S.C. 
112. For example, claim terms are construed in the manner in which a 
PHOSITA would understand them.\36\ Additionally, claims can be 
anticipated by prior art inherently if ``the missing descriptive matter 
is necessarily present in the thing described in the reference, and 
that it would be so recognized by persons of ordinary skill.'' \37\
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    \34\ 35 U.S.C. 112(a) (emphasis added).
    \35\ MPEP 2163.02 (``An objective standard for determining 
compliance with the written description requirement is, `does the 
description clearly allow persons of ordinary skill in the art to 
recognize that he or she invented what is claimed.' In re Gosteli, 
872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989)''); MPEP 
2164.02 (``Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1310, 115 
USPQ2d 2012, 2023 (Fed. Cir. 2015) (`Only a sufficient description 
enabling a person of ordinary skill in the art to carry out an 
invention is needed.')'').
    \36\ MPEP 2111.
    \37\ MPEP 2131.01, subsection III (citing Continental Can Co. v. 
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)).
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    The Court of Appeals for the Federal Circuit has identified several 
factors to consider when determining a PHOSITA's level of skill, 
including the type of problems encountered in the art, prior art 
solutions to those problems, the rapidity with which innovations are 
made, the sophistication of the technology, and the education level of 
active workers in the field.\38\ Each case may vary, not every one of 
the aforementioned factors may be present, and one or more factors may 
predominate the analysis.\39\
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    \38\ MPEP 2141.03, subsection I (citing GPAC, 57 F.3d at 1579).
    \39\ Id.
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    Accordingly, it is often critical in a patentability inquiry to 
assess the PHOSITA's level of skill in the relevant art,\40\ including 
for claim construction, anticipation, obviousness, written description, 
and enablement. In view of the above issues, the proliferation of AI as 
a tool for a PHOSITA raises questions on which the Office seeks input.
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    \40\ MPEP 2141.03.
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IV. Questions for Public Comment

    The questions enumerated below should not be taken as an indication 
that the USPTO has taken a position on or is predisposed to any 
particular views. The USPTO welcomes comments from the public on any 
issues that are relevant to this topic, and is particularly interested 
in answers to the following questions:

A. The Impact of AI on Prior Art

    1. In what manner, if any, does 35 U.S.C. 102 presume or require 
that a prior art disclosure be authored and/or published by humans? In 
what manner, if any, does non-human authorship of a disclosure affect 
its availability as prior art under 35 U.S.C. 102?
    2. What types of AI-generated disclosures, if any, would be 
pertinent to patentability determinations made by the USPTO? How are 
such disclosures currently being made available to the public? In what 
other ways, if any, should such disclosures be made available to the 
public?
    3. If a party submits to the Office a printed publication or other 
evidence that the party knows was AI-generated, should that party 
notify the USPTO of this fact, and if so, how? What duty, if any, 
should the party have to determine whether a disclosure was AI-
generated?
    4. Should an AI-generated disclosure be treated differently than a 
non-AI-

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generated disclosure for prior art purposes? For example:
    a. Should the treatment of an AI-generated disclosure as prior art 
depend on the extent of human contribution to the AI-generated 
disclosure?
    b. How should the fact that an AI-generated disclosure could 
include incorrect information (e.g., hallucinations) affect its 
consideration as a prior art disclosure?
    c. How does the fact that a disclosure is AI-generated impact other 
prior art considerations, such as operability, enablement, and public 
accessibility?
    5. At what point, if ever, could the volume of AI-generated prior 
art be sufficient to create an undue barrier to the patentability of 
inventions? At what point, if ever, could the volume of AI-generated 
prior art be sufficient to detract from the public accessibility of 
prior art (i.e., if a PHOSITA exercising reasonable diligence may not 
be able to locate relevant disclosures)?

B. The Impact of AI on a PHOSITA

    6. Does the term ``person'' in the PHOSITA assessment presume or 
require that the ``person'' is a natural person, i.e., a human? How, if 
at all, does the availability of AI as a tool affect the level of skill 
of a PHOSITA as AI becomes more prevalent? For example, how does the 
availability of AI affect the analysis of the PHOSITA factors, such as 
the rapidity with which innovations are made and the sophistication of 
the technology?
    7. How, if at all, should the USPTO determine which AI tools are in 
common use and whether these tools are presumed to be known and used by 
a PHOSITA in a particular art?
    8. How, if at all, does the availability to a PHOSITA of AI as a 
tool impact:
    a. Whether something is well-known or common knowledge in the art?
    b. How a PHOSITA would understand the meaning of claim terms?
    9. In view of the availability to a PHOSITA of AI as a tool, how, 
if at all, is an obviousness determination affected, including when:
    a. Determining whether art is analogous to the claimed invention, 
given AI's ability to search across art fields? Does the ``analogous'' 
art standard still make sense in view of AI's capabilities?
    b. Determining whether there is a rationale to modify the prior 
art, including the example rationales suggested by KSR (MPEP 2143, 
subsection I) (e.g., ``obvious to try'') or the scientific principle or 
legal precedent rationales (MPEP 2144)?
    c. Determining whether the modification yields predictable results 
with a reasonable expectation of success (e.g., how to evaluate the 
predictability of results in view of the stochasticity (or lack of 
predictability) of an AI system)?
    d. Evaluating objective indicia of obviousness or nonobviousness 
(e.g., commercial success, long felt but unsolved needs, failure of 
others, simultaneous invention, unexpected results, copying, etc.)?
    10. How, if at all, does the recency of the information used to 
train an AI model or that ingested by an AI model impact the PHOSITA 
assessment when that assessment may focus on an earlier point in time 
(e.g., the effective filing date of the claimed invention for an 
application examined under the First-Inventor-to-File provisions of the 
America Invents Act)?
    11. How, if at all, does the availability to a PHOSITA of AI as a 
tool impact the enablement determination under 35 U.S.C. 112(a)? 
Specifically, how does it impact the consideration of the In re Wands 
factors (MPEP 2164.01(a)) in ascertaining whether the experimentation 
required to enable the full scope of the claimed invention is 
reasonable or undue?

C. The Implications of AI That Could Require Updated Examination 
Guidance and/or Legislative Change

    12. What guidance from the USPTO on the impact of AI on prior art 
and on the knowledge of a PHOSITA, in connection with patentability 
determinations made by the Office, would be helpful?
    13. In addition to the considerations discussed above, in what 
other ways, if any, does the proliferation of AI impact patentability 
determinations made by the Office (e.g., under 35 U.S.C. 101, 102, 103, 
112, etc.)?
    14. Are there any laws or practices in other countries that 
effectively address any of the questions above? If so, please identify 
them and explain how they can be adapted to fit within the framework of 
U.S. patent law.
    15. Should title 35 of the U.S. Code be amended to account for any 
of the considerations set forth in this notice, and if so, what 
specific amendments do you propose, and why?

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-08969 Filed 4-29-24; 8:45 am]
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