TAKEAWAY: The USPTO is evaluating whether examination guidance is needed for AI patent applications. Public comments on patent issues may be submitted by November 8, 2019 to [email protected].

Advances in artificial intelligence (AI) have probed the boundaries of patentable subject matter, both in terms of “who” can invent and the state of the art. To assist with its consideration of these issues, the USPTO is requesting public comments on examination of AI inventions. In particular, the USPTO enumerated 12 questions to guide responses on the topic, including:

  • What are elements of an “AI invention”?
  • What are the ways that a natural person can contribute to conception of an AI invention and be eligible to be a named inventor?
  • Do current inventorship patent laws and regulations need to be revised to account for inventions where an entity/entities other than a natural person contributed to the invention’s conception?
  • How can patent applications for AI inventions comply with the enablement requirement?
  • Does AI impact the “level of a person of ordinary skill in the art”?

The deadline for submitting comments is November 8, 2019. The USPTO’s request for comments is available here. This request for public input follows a panel discussion hosted by the USPTO earlier this year to discuss the use of AI in protection and enforcement of IP rights, as well as implications for research, innovation, and commercialization.

The USPTO put out an analogous request on October 30 for public input on copyright and trademark issues that may be impacted by AI. The deadline for submitting comments will be December 16, 2019. The Request is available here.