USPTO Requests Comments on the Impact of Artificial Intelligence on Intellectual Property

On April 30, 2024, the U.S. Patent & Trademark Office (USPTO) published a request for comments in the Federal Register entitled 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.

It is vital that small businesses address the impact of artificial intelligence (AI) on intellectual property (IP) claims. Particularly, as the USPTO begins to grapple with AI, small businesses should respond to the questions posed by the USPTO. The USPTO is seeking comments on the following issues:

The Impact of AI on Prior Art

1. Can AI author a prior art disclosure?
2. Should the use of AI be disclosed in an IP application?
3. Should an applicant disclose when AI is used to prepare an application or publication?
4. Should AI-generated prior art disclosures be treated differently than human-produced disclosures?
5. Could the volume of AI-generated prior art create a barrier to patent inventions?

The Impact of AI on a Person Having Ordinary Skill in the Art (PHOSITA) Standard

• How will AI impact the IP term “person having ordinary skill in the art”?
• How should the USPTO determine when a particular AI tool is in common use?
• Does AI affect the level of what qualifies as “well-known” or “common knowledge in the art”?
• Do AI tools change the way the USPTO views “analogous art” standard, rationales such as “obvious to try,” and “obviousness/nonobviousness”?
• Can AI change whether the experimentation required to enable the full scope of the claimed invention is reasonable or undue?

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

• What guidance should the USPTO provide to the public on AI and prior art?
• Does AI impact the patentability determinations made by the USPTO?
• Are there any countries that effectively address the various issues with AI and IP?

The request for comments closes on July 29, 2024.

Read the Federal Register notice.

Submit comments to the notice on Regulations.gov.

Please reach out to Assistant Chief Counsel David Mullis at David.mullis@sba.gov with any questions or small entity concerns.