FICPI has responded to the USPTO’s request for comment on issues relating to patenting AI inventions, and is encouraged to see that USPTO has also sought comment on relevant policies or practices from other major patent agencies to help inform the USPTO’s policies and practices.

On August 27, 2019 the United States Patent and Trademark Office (USPTO) posted a notice requesting comments from the public on various issues related to patenting artificial intelligence (AI) inventions. 

By way of this notice, the USPTO expressed an interest in gathering information on patent-related issues regarding AI inventions for the purposes of “evaluating whether further examination guidance is needed to promote the reliability and predictability of patenting artificial intelligence inventions”.

To that end, the USPTO published a set of 12 questions to obtain written comments from the public. 

FICPI duly replied with comments in response to each of the questions. A copy of FICPI’s complete response can be found here.

The questions explored several areas of interest, including: 

  • How AI inventions should be defined
  • Inventorship by AI entities
  • Patent eligibility of AI-related inventions
  • Disclosure-related considerations
  • How AI inventions can best comply with the enablement requirement
  • Other considerations such as whether AI impacts the level of a person of ordinary skill in the art
  • Whether AI impacts what is considered prior art
  • Whether new forms of IP protection might be needed.

FIPCI provided detailed and insightful comments in response to each of the 12 questions, expressing the need to be adaptive but realistic in view of where AI technology is in the no doubt long horizon of its development and use. 

Not surprisingly, but encouraging to the author, the USPTO’s questions closely mirrored the main issues discussed in the joint Colloquium on AI held by FICPI, AIPLA and AIPPI in Turin, Italy in March of 2019 (see FICPI comments).  

The final question posed by the USPTO sought input on relevant policies or practices from other major patent agencies that might help inform the USPTO’s policies and practices. 

This is encouraging and will likely become a theme in the next few years as the entire patent system is impacted by the rise of AI inventions and inventions created using AI. Indeed, when visiting several patent Offices during FICPI’s official visits in 2019, this topic was discussed more than once!

FICPI’s view and involvement 

Regular visits to the main Patent Offices across the world and written responses to calls for input is core to one of FICPI’s principal aims, that of “expressing FICPI’s opinions with regard to newly proposed international and national legislation that is of general concern to the profession”. Participation in relevant Study & Work Committees allows FICPI’s members to get more closely involved as laws and policies to develop, and to help shape them. 

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