USPTO Seeks Comments on Intersection of Intellectual Property and Artificial Intelligence in Second Federal Register Notice

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On October 30, 2019, the U.S. Patent and Trademark Office released a Federal Register Notice requesting comments on issues of artificial intelligence (AI) and intellectual property, the second such request in the past three months.

In a blog post on the USPTO "Director's Forum", USPTO Director Andrei Iancu and Deputy Director Laura Peter stated that "[t]he fields of copyright, trademark, database protections, and trade secret law, among others, may be . . . susceptible to the impacts of developments in AI."  As such, the USPTO has requested public feedback by way of thirteen questions involving topics ranging from whether an AI, without human intervention, can create a copyrightable work to whether and how AI might impact trade secret law.  The Notice questions are summarized as follows:

1.  Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law?

2.  Assuming involvement by a natural person is or should be required, what kind of involvement would or should be sufficient so that the work qualifies for copyright protection? For example, should it be sufficient if a person (i) designed the AI algorithm or process that created the work; (ii) contributed to the design of the algorithm or process; (iii) chose data used by the algorithm for training or otherwise; (iv) caused the AI algorithm or process to be used to yield the work; or (v) engaged in some specific combination of the foregoing activities? Are there other contributions a person could make in a potentially copyrightable AI-generated work in order to be considered an "author"?

3.  To the extent an AI algorithm or process learns its function(s) by ingesting large volumes of copyrighted material, does the existing statutory language (e.g., the fair use doctrine) and related case law adequately address the legality of making such use?

4.  Are current laws for assigning liability for copyright infringement adequate to address a situation in which an AI process creates a work that infringes a copyrighted work?

5.  Should an entity or entities other than a natural person, or company to which a natural person assigns a copyrighted work, be able to own the copyright on the AI work? For example: Should a company who trains the artificial intelligence process that creates the work be able to be an owner?

6.  Are there other copyright issues that need to be addressed to promote the goals of copyright law in connection with the use of AI?

7.  Would the use of AI in trademark searching impact the registrablity of trademarks?

8.  How does AI impact trademark law? Is the existing statutory language in the Lanham Act adequate to address the use of AI in the marketplace?

9.  How does AI impact the need to protect databases and data sets? Are existing laws adequate to protect such data?

10.  How does AI impact trade secret law? Is the Defend Trade Secrets Act (DTSA), 18 U.S.C. 1836 et seq., adequate to address the use of AI in the marketplace?

11.  Do any laws, policies, or practices need to change in order to ensure an appropriate balance between maintaining trade secrets on the one hand and obtaining patents, copyrights, or other forms of intellectual property protection related to AI on the other?

12.  Are there any other AI-related issues pertinent to intellectual property rights (other than those related to patent rights) that the USPTO should examine?

13.  Are there any relevant policies or practices from intellectual property agencies or legal systems in other countries that may help inform USPTO's policies and practices regarding intellectual property rights (other than those related to patent rights)?

In August, the USPTO previously requested comments on AI inventions with respect to patent law and policy.  The questions from the first Notice covered a variety of patent-related topics, including whether revisions to patent laws may be needed.  The current Notice extends similar inquiries to ask how AI may affect non-patent areas of IP (e.g., copyright, trademark, and other intellectual property rights).  Notably, some of the questions could even foreshadow how examination procedures might evolve at the USPTO to include AI-based trademark searches.  The Notice stated that public comments in these areas would aid the USPTO to evaluate whether further guidance to the Examining Corps is needed and to assist in the development of any such guidance with respect to intellectual property policy and its relationship with AI.

The USPTO has clearly made understanding the benefits/drawbacks of AI an action item for itself in the near future, on the policy front, and possibly in its own examination practice.  The Notice itself pledges that "[t]he USPTO is committed to keeping pace with this critical technology in order to accelerate American innovation."  Furthermore, the Patent Office has an open job posting for a "Senior Level Artificial Intelligence Technical Expert" whose responsibilities may include "operational implementation of Artificial Intelligence (AI) infrastructure/architecture throughout the enterprise."  Going forward, it will be interesting to see how AI impacts existing patent and non-patent IP law and policy, as well as how AI-based innovations will be incorporated into the operation of the USPTO.

Written comments can be provided by email to AIPartnership@uspto.gov until December 16, 2019.  Written comments will be made available for public inspection.

For additional information, please see:

• Second Federal Notice: Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation (FR Doc. 2019-23638).
• First Federal Notice: Request for Comments on Patenting Artificial Intelligence Inventions (FR Doc. 2019-18443).
• Andrei Iancu and Laura Peter, "USPTO issues second Federal Register Notice on artificial intelligence and innovation," Director's Forum: A Blog from USPTO's Leadership, October 30, 2019.
Senior Level Artificial Intelligence Technical Expert, usajobs.gov, Announcement Number OCIO-2019-0010.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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