[Federal Register Volume 89, Number 129 (Friday, July 5, 2024)]
[Notices]
[Pages 55588-55590]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-14691]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2024-0032]


Impact of the Proliferation of AI on Prior Art and PHOSITA: 
Notice of Public Listening Session

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

ACTION: Notice of public listening session.

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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). On April 
30, 2024, the USPTO published a request for comments (RFC) in the 
Federal Register regarding the impact of the proliferation of 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. In furtherance of its AI/ET Partnership, the USPTO hereby 
announces a public listening session on July 25, 2024, titled 
``Listening Session on the Impact of the Proliferation of AI on Prior 
Art and PHOSITA.'' The purpose of the listening session is to obtain 
public input from stakeholders on the impact of the proliferation of AI 
on prior art and PHOSITA, as set forth in the questions for public 
comment of the RFC. The USPTO expects that the feedback received in 
this listening session and the written responses received for the RFC 
will help the USPTO 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: The Listening Session on the Impact of Proliferation of AI on 
Prior Art and PHOSITA will be held on July 25, 2024, from 10:00 a.m. to 
3:00 p.m. ET. Persons seeking to speak at the listening session, either 
virtually or in person, must register by 8:00 p.m. ET on July 19, 2024, 
at the website provided in the ADDRESSES section of this notice. 
Persons seeking to attend, either virtually or in person, but not speak 
at the event, must register by 8:00 a.m. ET on July 25, 2024, at the 
website provided in the ADDRESSES section of this notice.

ADDRESSES: Register to speak or attend the listening session at 
www.uspto.gov/initiatives/artificial-intelligence/ai-and-emerging-technology-partnership-engagement-and-events. The listening session 
will take place virtually and in person at the USPTO Headquarters, 
National Inventors Hall of Fame Museum, 600 Dulany Street, Alexandria, 
VA 22314. Registration is required to speak for both virtual and in-
person attendance. Seating is limited for in-person attendance. 
Registrants must indicate whether they are registering as a listen-only 
attendee or as a speaker participant.
    The public meeting will be physically accessible to people with 
disabilities. Individuals requiring accommodation, such as sign 
language interpretation or other ancillary aids, should communicate 
their needs to an individual listed under the FOR FURTHER INFORMATION 
CONTACT section of this notice at least seven business days prior to 
the public meeting.

FOR FURTHER INFORMATION CONTACT: Srilakshmi Kumar, Senior Advisor, 
Office of the Under Secretary, 571-272-7769, or Aleksandr Kerzhner, 
Supervisory Patent Examiner, 571-270-1760. You can also send inquiries 
to [email protected].

SUPPLEMENTARY INFORMATION:

[[Page 55589]]

I. Background

    To continue its support for the National AI Initiative Act of 2020, 
which became law on January 1, 2021, the USPTO announced in June 2022 
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 and the USPTO's recent AI-related efforts associated with 
Executive Order 14110,\1\ on April 30, 2024, the USPTO issued an RFC 
titled ``Request for Comments on the Impact of Proliferation of AI on 
Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art, 
and Determinations of Patentability Made in View of the Foregoing'' (89 
FR 34217, April 30, 2024) (available at www.federalregister.gov/documents/2024/04/30/2024-08969/request-for-comments-regarding-the-impact-of-the-proliferation-of-artificial-intelligence-on-prior-). The 
RFC provides an overview of prior art considerations and discusses some 
concerns relevant to AI-generated prior art, discusses the current 
PHOSITA assessment as it is applied by the USPTO and the courts, and 
poses 15 questions for public comment on the impact of AI on prior art 
and the PHOSITA assessment.
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    \1\ Executive Order on the Safe, Secure, and Trustworthy 
Development and Use of Artificial Intelligence, Executive Order 
14110, 88 FR 75191 (November 1, 2023).
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II. Public Listening Session

    The USPTO will hold a public listening session virtually and in 
person at the USPTO Headquarters in Alexandria, Virginia, on July 25, 
2024.
    Requests to participate as a speaker must include:
    1. The name of the person desiring to participate;
    2. The organization(s) that person represents, if any;
    3. Contact information (zip code, telephone number, and email 
address);
    4. Information on the specific topic or question(s) from the RFC of 
interest to the speaker (or their organization); and
    5. A summary of comments to be articulated during the listening 
session (discussed further below).
    Speaking slots are limited; preference will be given to speakers 
based on the specific topic or question(s) provided in the request to 
participate. Selected speakers may be grouped by topic. Topics and 
speakers will be announced a few days prior to the event and listening 
session. Speakers may attend virtually or in person and are required to 
submit their remarks for the listening session in advance through the 
Federal eRulemaking Portal at www.regulations.gov.
    Each speaker will be informed of their assigned time slot in 
advance. Time slots will be at least three minutes, but may be longer, 
depending on the number of speakers registered. USPTO personnel may 
reserve time to ask questions of particular speakers after the delivery 
of a speaker's remarks.

III. Questions From the RFC on the Impact of AI on Prior Art and 
PHOSITA for Discussion at the Listening Session

    The purpose of the listening session is to obtain public input from 
a broad group of stakeholders regarding the impact of the proliferation 
of AI on prior art and PHOSITA, as set forth in the questions for 
public comment of the RFC.
    We encourage interested speakers to address the questions posed in 
the RFC and to submit research and data, if any, that inform their 
comments on these questions. Official written comments to the questions 
raised in the RFC should be submitted as outlined in the RFC. For 
convenience, a copy of the questions from the RFC is provided below in 
their entirety.

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-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,

[[Page 55590]]

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. 2024-14691 Filed 7-3-24; 8:45 am]
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