McDonnell Boehnen Hulbert & Berghoff LLP

The public comment period regarding patenting of artificial intelligence (AI) invention is closing tomorrow, Friday, October 11, 2019.  In a Notice posted August 27, 2019, USPTO Director Iancu sought public input on issues relating to AI-based inventions in an effort to determine whether further AI-specific guidance should be provided to the Examiner corps.

The Notice centered around twelve questions involving topics ranging from AI patent policy to whether new forms of intellectual property protection are needed.  The questions are summarized as follows:

1.  What are the main elements of an AI-based invention?

2.  What are the different ways that a natural person can contribute to conception of an AI invention and be considered a proper inventor?

3.  Do current patent laws regarding inventorship need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of an invention?

4.  Should an entity other than a natural person, or company to which a natural person assigns an invention, be able to own a patent on the AI invention?

5.  Are there any patent eligibility considerations unique to AI inventions?

6.  Are there any disclosure-related considerations unique to AI inventions? Does there need to be a change in the level of detail an applicant must provide in order to comply with the written description requirement, particularly for deep-learning systems that may have a large number of hidden layers with weights that evolve during the learning/training process without human intervention or knowledge?

7.  How can AI-based patent applications best comply with the enablement requirement, particularly given the unpredictability of certain AI systems?

8.  Does AI impact the level of a person of ordinary skill in the art? If so, how? For example: Should assessment of the level of ordinary skill in the art reflect the capability possessed by the AI itself?

9.  Are there any prior art considerations unique to AI inventions?

10.  Are there any new forms of intellectual property protections that are needed for AI inventions, such as data protection?

11.  Are there any other issues pertinent to patenting AI inventions that the USPTO should examine?

12.  Are there any relevant policies or practices from other major patent agencies that may help inform the USPTO's policies and practices regarding patenting of AI inventions?

Responses to the request for public comment could lead to new and/or revised examining guidance (and practices) at the PTO.  In the Notice, Director Iancu stated that such new guidance could help "promote the reliability and predictability" of patenting AI inventions.

Notably, the USPTO appears to be trying to understand whether current patent laws should be revised to take into account inventions where "an entity or entities other than a natural person" contributed to the conception of an invention.  That is:  for inventions arising, at least in part, through AI (e.g., machine learning systems), can or should the AI be eligible to be named as an inventor or an applicant?

In a blog post on the USPTO "Director's Forum," Deputy Director of the USPTO Laura Peter remarked that comments from the public regarding this Notice will allow the USPTO to "continue to ensure the appropriate balance in the administration of our IP system," and consider "if new legal rights are needed in the wake of more advanced AI."

Written comments can be provided by email to during the period for comment, which ends tomorrow, October 11, 2019.  Written comments will be made available for public inspection.

For additional information regarding this and other related topics, please see:

Request for Comments on Patenting Artificial Intelligence Inventions (FR Doc. 2019-18443)
• Laura Peter, "USPTO announces Federal Register Notice on artificial intelligence patent issues," Director's Forum: A Blog from USPTO's Leadership, August 26, 2019.
• Aaron Gin, "Intelligent Machines – Engines of Intellectual Property Creation?" Snippets, Spring 2018