Request for Comments Regarding Artificial Intelligence and Inventorship, 9492-9495 [2023-03066]

Download as PDF 9492 Federal Register / Vol. 88, No. 30 / Tuesday, February 14, 2023 / Notices The meetings will be a hybrid meeting. The in-person component of the meeting will be held at the Alaska Fisheries Science Center in the room 2039, 7600 Sand Point Way NE, Building 4, Seattle, WA 98115, or join online through the link at https:// meetings.npfmc.org/Meeting/Details/ 2979. Council address: North Pacific Fishery Management Council, 1007 W 3rd Ave, Anchorage, AK 99501–2252; telephone: (907) 271–2809. Instructions for attending the meeting are given under SUPPLEMENTARY INFORMATION below. ADDRESSES: Dr. Diana Stram, Council staff; phone: (907) 271–2809 and email: diana.stram@ noaa.gov. For technical support, please contact our administrative staff; email: npfmc.admin@noaa.gov. SUPPLEMENTARY INFORMATION: FOR FURTHER INFORMATION CONTACT: Agenda Wednesday, March 1, 2023 Through Thursday, March 2, 2023 The agenda will include: (a) review changes to climate readiness synthesis from the SSC; (b) discuss concept of soliciting stakeholder input on climate resilient metrics; (c) review ongoing process for incorporating climate information into council process and future plans; (d) discuss and recommend agenda, format and goals and objectives for scenario planning workshop; (e) work plan for 2023–2024; and (f) other business. The agenda is subject to change, and the latest version will be posted at https:// meetings.npfmc.org/Meeting/Details/ 2979 prior to the meeting, along with meeting materials. Connection Information You can attend the meeting online using a computer, tablet, or smart phone; or by phone only. Connection information will be posted online at: https://meetings.npfmc.org/Meeting/ Details/2979. ddrumheller on DSK120RN23PROD with NOTICES Public Comment Public comment letters will be accepted and should be submitted electronically to https:// meetings.npfmc.org/Meeting/Details/ 2979. Authority: 16 U.S.C. 1801 et seq. Dated: February 8, 2023. Rey Israel Marquez, Acting Deputy Director, Office of Sustainable Fisheries, National Marine Fisheries Service. [FR Doc. 2023–03068 Filed 2–13–23; 8:45 am] BILLING CODE 3510–22–P VerDate Sep<11>2014 20:12 Feb 13, 2023 Jkt 259001 DEPARTMENT OF COMMERCE Patent and Trademark Office [Docket No.: PTO–P–2022–0025] Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights United States Patent and Trademark Office, Department of Commerce. ACTION: Request for comments; extension of comment period. AGENCY: The United States Patent and Trademark Office (USPTO) is extending the comment period for the notice titled ‘‘Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights’’ that was published in the Federal Register on October 4, 2022. The notice’s comment period was previously extended until February 1, 2023. The comment period is now extended a second time; this will be the last extension of the comment period. SUMMARY: The comment period for the notice published at 87 FR 60130, which was extended at 87 FR 66282 on November 3, 2022, is further extended. Comments are due by February 28, 2023. DATES: For reasons of government efficiency, comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov. This docket closed on February 1, 2023, but is now reopened to accept additional comments. To submit comments via the portal, enter docket number PTO–P– 2022–0025 on the homepage and click ‘‘Search.’’ The site will provide a search results page listing all documents associated with this docket. Find a reference to this document and click on the ‘‘Comment’’ icon, complete the required fields, and enter or attach your comments. Attachments to electronic comments will be accepted as various file types, including Adobe® portable document format (PDF) and Microsoft Word® format. Because comments will be made available for public inspection, information the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. Visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal. If electronic submission of comments is not feasible due to a lack of access to a computer and/or the internet, please contact the USPTO using the contact information below (at FOR FURTHER INFORMATION CONTACT) for special instructions. ADDRESSES: PO 00000 Frm 00067 Fmt 4703 Sfmt 4703 FOR FURTHER INFORMATION CONTACT: Linda Horner, Administrative Patent Judge, at 571–272–9797; June Cohan, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patents, at 571–272–7744; or Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patents, at 571–272– 7728. SUPPLEMENTARY INFORMATION: On October 4, 2022, the USPTO published a notice titled ‘‘Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights’’ to seek initial public comments on proposed initiatives directed at bolstering the robustness and reliability of patents to incentivize and protect new and nonobvious inventions while facilitating the broader dissemination of public knowledge, which will, in turn, promote innovation and competition. See 87 FR 60130. On November 3, 2022, the USPTO extended the written comment period until February 1, 2023. See 87 FR 66282. The USPTO is now extending the written comment period a second time until February 28, 2023, to ensure that all stakeholders have a sufficient opportunity to submit comments on the questions presented in the October 4, 2022, notice. This will be the last extension of the comment period. Comments previously submitted to the docket through the Federal eRulemaking Portal do not need to be resubmitted. Any comments sent directly to USPTO after the close of the previous deadline of February 1, 2023, must be submitted through the Federal eRulemaking Portal before the newly extended deadline to be given full consideration. All other information and instructions to commenters provided in the October 4, 2022, notice remain unchanged. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2023–03119 Filed 2–13–23; 8:45 am] BILLING CODE 3510–16–P DEPARTMENT OF COMMERCE Patent and Trademark Office [Docket No. PTO–P–2022–0045] Request for Comments Regarding Artificial Intelligence and Inventorship United States Patent and Trademark Office, Department of Commerce. AGENCY: E:\FR\FM\14FEN1.SGM 14FEN1 Federal Register / Vol. 88, No. 30 / Tuesday, February 14, 2023 / Notices ACTION: Request for comments. The United States Patent and Trademark Office (USPTO) plays an important role in incentivizing and protecting innovation, including innovation enabled by artificial intelligence (AI), to ensure continued U.S. leadership in AI and other emerging technologies (ET). In June 2022, the USPTO announced the formation of the AI/ET Partnership, which provides an opportunity to bring stakeholders together through a series of engagements to share ideas, feedback, experiences, and insights on the intersection of intellectual property and AI/ET. To build on the AI/ET Partnership efforts, the USPTO is seeking stakeholder input on the current state of AI technologies and inventorship issues that may arise in view of the advancement of such technologies, especially as AI plays a greater role in the innovation process. As outlined in sections II to IV below, the USPTO is pursuing three main avenues of engagement with stakeholders to inform its future efforts on inventorship and promoting AIenabled innovation: a series of stakeholder engagement sessions; collaboration with academia through scholarly research; and a request for written comments to the questions identified in section IV. The USPTO encourages stakeholder engagement through one or more of these avenues. SUMMARY: Submissions to the special issue of the ‘‘Journal of the Patent and Trademark Office Society’’ may be made directly to the journal at editor@ jptos.org by July 1, 2023. Comments, in general, and responses to the questions identified in section IV must be received by May 15, 2023 to ensure consideration. DATES: For reasons of Government efficiency, comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov. To submit comments via the portal, enter docket number PTO–P–2022–0045 on the homepage and click ‘‘Search.’’ The site will provide a search results page listing all documents associated with this docket. Find a reference to this notice and click on the ‘‘Comment Now!’’ icon, complete the required fields, and enter or attach your comments. Attachments to electronic comments will be accepted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an ddrumheller on DSK120RN23PROD with NOTICES ADDRESSES: VerDate Sep<11>2014 20:12 Feb 13, 2023 Jkt 259001 address or phone number, should not be included in the comments. Visit the Federal eRulemaking Portal website (www.regulations.gov) for additional instructions on providing comments via the portal. If electronic submission of comments is not feasible due to a lack of access to a computer and/or the internet, please contact the USPTO using the contact information below for special instructions. FOR FURTHER INFORMATION CONTACT: Matthew Sked, Senior Legal Advisor, Office of Patent Legal Administration, at 571–272–7627. Inquiries can also be sent to AIPartnership@uspto.gov. SUPPLEMENTARY INFORMATION: I. Background In August 2019, the USPTO issued a request for public comments on patenting AI inventions. Among the various policy questions raised in the notice, the USPTO requested comments on several issues involving inventorship, such as the different ways a natural person can contribute to the conception of an AI invention and whether current laws and regulations involving inventorship need to be revised to consider contributions from entities other than natural persons. See Request for Comments on Patenting Artificial Intelligence Inventions, 84 FR 44889 (August 27, 2019). In October 2020, the USPTO published a report titled ‘‘Public Views on Artificial Intelligence and Intellectual Property Policy,’’ which took a comprehensive look at the stakeholder feedback received in response to the questions posed in the August 2019 notice.1 With respect to inventorship, some commenters took the position that current AI could not invent without human intervention and that current inventorship law is equipped to handle inventorship that involves AI technologies. However, other commenters indicated that AI can potentially contribute to the creation of inventions in a variety of ways, including generating patentable inventions to which no human has made an inventive contribution.2 Subsequently, in June 2022, the USPTO held its inaugural AI/ET Partnership meeting. During a panel discussion on ‘‘Inventorship and the Advent of Machine Generated Inventions,’’ there was a discussion among the panelists about AI’s 1 The full report is available at www.uspto.gov/ sites/default/files/documents/USPTO_AI-Report_ 2020-10-07.pdf. 2 See, e.g., Response from Ryan Abbott (November 5, 2019) at 3–4, www.uspto.gov/sites/default/files/ documents/Ryan-Abbott_RFC-84-FR-44889.pdf. PO 00000 Frm 00068 Fmt 4703 Sfmt 4703 9493 increasing role in innovation. Although there was consensus that AI cannot ‘‘conceive’’ of inventions, some panelists contended that AI is merely a tool like any other tool used in the inventive process, while others pointed to situations in which AI systems can output patentable inventions or contribute at the level of a joint inventor. Details and a recording of the inaugural AI/ET Partnership event are available at https://www.uspto.gov/ about-us/events/aiet-partnership-series1-kickoff-uspto-aiet-activities-andpatent-policy. While the USPTO was exploring the contours of inventorship law with respect to AI generated inventions, the USPTO received applications asserting that an AI machine was the inventor. On April 22, 2020, the USPTO issued a pair of decisions denying petitions to name Device for Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as the inventor. The USPTO’s decision explained that under current U.S. patent laws, inventorship is limited to a natural person(s). The USPTO’s decision was upheld on September 2, 2021 in a decision from the United States District Court for the Eastern District of Virginia. Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021). On appeal, the Court of Appeals for the Federal Circuit (Federal Circuit) affirmed the holding that an inventor must be a natural person. Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022). Specifically, the Federal Circuit held that 35 U.S.C. 100(f) defines an inventor as ‘‘the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.’’ The court found that based on Supreme Court precedent, an ‘‘individual’’ ordinarily means a human being unless Congress provided some indication that a different meaning was intended. Id. at 1211 (citing Mohamad v. Palestinian Auth. 566 U.S. 449, 454 (2012)). Based on the finding that there is nothing in the Patent Act to indicate Congress intended a different meaning, and that the Act includes other language to support the conclusion that an ‘‘individual’’ in the Act refers to a natural person, the court concluded that an inventor must be a natural person. Id. The court explained, however, that it was not confronted with ‘‘the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.’’ Thaler v. Vidal, 43 F.4th at 1213. In addition, there is a growing consensus that AI is playing a greater role in the innovation process (i.e., AI is being used to drive innovation in other E:\FR\FM\14FEN1.SGM 14FEN1 9494 Federal Register / Vol. 88, No. 30 / Tuesday, February 14, 2023 / Notices technologies). For example, at the AI/ET Partnership meetings, the USPTO heard that new AI models are being used in drug discovery, personalized medicine, and chip design. As noted above, some stakeholders have indicated that technologies using machine learning may be able to contribute at the level of a joint inventor in some inventions today. Further, Congress has taken note of the increased role that AI plays in innovation. On October 27, 2022, Senators Thom Tillis and Chris Coons called on the USPTO and the U.S. Copyright Office to jointly create a national commission on AI to consider changes to existing law to incentivize future AI-related innovations and creations. In the wake of the Thaler decision and in view of the current state of AI and machine learning, there remains uncertainty around AI inventorship. This uncertainty is becoming more immediate as AI, particularly machine learning, systems make greater contributions to innovation, as noted above. If these technologies are in fact capable of significantly contributing to the creation of an invention, the question arises whether the current state of the law provides patent protection for these inventions. Accordingly, in order to foster and promote AI-enabled innovation, the USPTO requests further stakeholder feedback on the current state of AI technology in the invention creation process and on how to address inventions created with significant AI contributions. ddrumheller on DSK120RN23PROD with NOTICES II. Stakeholder Engagement Sessions The USPTO will hold stakeholder engagement sessions regarding inventorship and AI-enabled innovation. Information about these sessions will be announced in the Federal Register and posted on the AI/ ET Partnership web page at www.uspto.gov/aipartnership. III. Collaboration With Academia The USPTO also seeks to foster increased academic engagement on inventorship and AI-enabled innovation. Universities and academic researchers play a multifaceted role in illuminating AI’s role in innovation. Many of the technical breakthroughs that underpin AI’s potential ability to contribute to the inventive process are inspired by work in university research labs. Legal and policy scholars from those same institutions can help explore the resulting implications from an intellectual property perspective. The USPTO encourages universities to support research and related academic initiatives—particularly those that foster VerDate Sep<11>2014 20:12 Feb 13, 2023 Jkt 259001 interdisciplinary collaboration between AI technical researchers, legal scholars, and other contributors—that can help address open questions in this area, such as the ones posed in section IV of this notice, from a scholarly perspective. When appropriate, the USPTO will consider opportunities to engage and collaborate with such academic initiatives via the AI/ET Partnership. The USPTO welcomes novel scholarship that can inform its future efforts as to inventorship and AIenabled innovation. Recognizing the value of a diversity of perspectives, the USPTO invites both descriptive and normative contributions from a variety of disciplines, including but not limited to computer science, law, public policy, economics, applied mathematics, and cognitive science. The ‘‘Journal of the Patent and Trademark Office Society’’ plans to publish a special issue focused on inventorship and AI-enabled innovation. Submissions for this special issue may be made directly to the journal at editor@jptos.org by July 1, 2023.3 The USPTO will closely monitor scholarship published in this and other venues for helpful insights that advance our understanding of current inventorship doctrine, the present and future capabilities of AI systems relevant to the inventive process, and considerations about whether the U.S. patent system should be modified. IV. Questions for Public Comment The USPTO invites written responses from the public to the following questions: 1. How is AI, including machine learning, currently being used in the invention creation process? Please provide specific examples. Are any of these contributions significant enough to rise to the level of a joint inventor if they were contributed by a human? 2. How does the use of an AI system in the invention creation process differ from the use of other technical tools? 3. If an AI system contributes to an invention at the same level as a human who would be considered a joint 3 The ‘‘Journal of the Patent and Trademark Office Society’’ is independently edited and published under the direction of a Board of Governors appointed by the Patent and Trademark Office Society. Although members of the Board of Governors and the publication staff are employees of the USPTO, their involvement with the journal is in a strictly personal capacity. Note that due to the limited space available in the print volume, submission to the journal does not guarantee publication. Selected articles must comply with the journal’s publication standards, including, but not limited to, being an original work and substantially not duplicative of recent or upcoming articles. The terms and conditions of the journal’s article publication process are available at www.jptos.org/ authorcontract. PO 00000 Frm 00069 Fmt 4703 Sfmt 4703 inventor, is the invention patentable under current patent laws? For example: a. Could 35 U.S.C. 101 and 115 be interpreted such that the Patent Act only requires the listing of the natural person(s) who invent(s), such that inventions with additional inventive contributions from an AI system can be patented as long as the AI system is not listed as an inventor? b. Does the current jurisprudence on inventorship and joint inventorship, including the requirement of conception, support the position that only the listing of the natural person(s) who invent(s) is required, such that inventions with additional inventive contributions from an AI system can be patented as long as the AI system is not listed as an inventor? c. Does the number of human inventors impact the answer to the questions above? 4. Do inventions in which an AI system contributed at the same level as a joint inventor raise any significant ownership issues? For example: a. Do ownership rights vest solely in the natural person(s) who invented or do those who create, train, maintain, or own the AI system have ownership rights as well? What about those whose information was used to train the AI system? b. Are there situations in which AIgenerated contributions are not owned by any entity and therefore part of the public domain? 5. Is there a need for the USPTO to expand its current guidance on inventorship to address situations in which AI significantly contributes to an invention? How should the significance of a contribution be assessed? 6. Should the USPTO require applicants to provide an explanation of contributions AI systems made to inventions claimed in patent applications? If so, how should that be implemented, and what level of contributions should be disclosed? Should contributions to inventions made by AI systems be treated differently from contributions made by other (i.e., non-AI) computer systems? 7. What additional steps, if any, should the USPTO take to further incentivize AI-enabled innovation (i.e., innovation in which machine learning or other computational techniques play a significant role in the invention creation process)? 8. What additional steps, if any, should the USPTO take to mitigate harms and risks from AI-enabled innovation? In what ways could the USPTO promote the best practices outlined in the Blueprint for an AI Bill E:\FR\FM\14FEN1.SGM 14FEN1 Federal Register / Vol. 88, No. 30 / Tuesday, February 14, 2023 / Notices of Rights 4 and the AI Risk Management Framework 5 within the innovation ecosystem? 9. What statutory changes, if any, should be considered as to U.S. inventorship law, and what consequences do you foresee for those statutory changes? For example: a. Should AI systems be made eligible to be listed as an inventor? Does allowing AI systems to be listed as an inventor promote and incentivize innovation? b. Should listing an inventor remain a requirement for a U.S. patent? 10. Are there any laws or practices in other countries that effectively address inventorship for inventions with significant contributions from AI systems? 11. The USPTO plans to continue engaging with stakeholders on the intersection of AI and intellectual property. What areas of focus (e.g., obviousness, disclosure, data protection) should the USPTO prioritize in future engagements? Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2023–03066 Filed 2–13–23; 8:45 am] BILLING CODE 3510–16–P DEPARTMENT OF COMMERCE Patent and Trademark Office [Docket No.: PTO–P–2021–0037] Sixth Extension of the Modified COVID–19 Prioritized Examination Pilot Program for Patent Applications United States Patent and Trademark Office, Department of Commerce. ACTION: Notice. AGENCY: To continue to support the acceleration of innovations in the fight against COVID–19 during the public health emergency, the United States Patent and Trademark Office (USPTO or Office) is extending the modified COVID–19 Prioritized Examination Pilot Program, which provides prioritized examination of certain patent applications. Requests that are compliant with the pilot program’s requirements and are filed on or before May 11, 2023, will be accepted. DATES: The COVID–19 Prioritized Examination Pilot Program is extended ddrumheller on DSK120RN23PROD with NOTICES SUMMARY: 4 See https://www.whitehouse.gov/ostp/ai-bill-ofrights/. 5 See https://www.nist.gov/itl/ai-riskmanagement-framework. VerDate Sep<11>2014 20:12 Feb 13, 2023 Jkt 259001 as of February 14, 2023, to run until May 11, 2023. FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration (571–272– 77285, raul.tamayo@uspto.gov). SUPPLEMENTARY INFORMATION: In 2020, the USPTO published a notice on the implementation of the COVID–19 Prioritized Examination Pilot Program. See COVID–19 Prioritized Examination Pilot Program, 85 FR 28932 (May 14, 2020) (COVID–19 Track One Notice). The pilot program was implemented to support the acceleration of innovations in the fight against COVID–19. The COVID–19 Track One Notice indicated that an applicant may request prioritized examination without payment of the prioritized examination fee and associated processing fee if: (1) the patent application’s claim(s) covered a product or process related to COVID– 19, (2) the product or process was subject to an applicable Food and Drug Administration (FDA) approval for COVID–19 use, and (3) the applicant met other requirements noted in the COVID–19 Track One Notice. Since the COVID–19 Track One Notice, the USPTO has modified the pilot program by removing the limit on the number of patent applications that could receive prioritized examination and extending the pilot program five times through notices published in the Federal Register. The most recent notice (87 FR 78661, December 22, 2022) extended the program until February 15, 2023. As of January 9, 2023, 364 patents had issued from applications granted prioritized status under the pilot program. The average total pendency for those applications was 356 days. The shortest pendency from filing date to issue date for those applications was 75 days. The USPTO is further extending the pilot program by setting the expiration date as May 11, 2023. The extension aligns with the January 30, 2023, announcement by the White House that it plans to extend the public health emergency to May 11, 2023, and then end it on that date. See www.whitehouse.gov/wp-content/ uploads/2023/01/SAP-H.R.-382-H.J.Res.-7.pdf. Following the expiration of this extension, the pilot program will be terminated in favor of the Office dedicating its resources to its other prioritized examination programs. Patent applicants interested in expediting the prosecution of their patent application may instead seek to use the Prioritized Examination (Track PO 00000 Frm 00070 Fmt 4703 Sfmt 4703 9495 One) Program. Patent applications accorded prioritized examination under the pilot program will not lose that status merely because the application is still pending after the date the pilot program is terminated but will instead retain prioritized examination status until that status is terminated for one or more reasons, as described in the COVID–19 Track One Notice. The Track One Program permits an applicant to have a patent application advanced out of turn (accorded special status) for examination under 37 CFR 1.102(e) if the applicant timely files a request for prioritized (Track One) examination accompanied by the appropriate fees and meets the other conditions of 37 CFR 1.102(e). See § 708.02(b)(2) of the Manual of Patent Examining Procedure (9th ed., rev. 10.2019, June 2020). The current USPTO fee schedule is available at www.uspto.gov/Fees. The Track One Program does not have the restrictions of the COVID–19 Prioritized Examination Pilot Program regarding the types of inventions for which special status may be sought, as the Track One Program does not require a connection to any particular technology. Moreover, under the Track One Program, an applicant can avoid delays associated with the determination of whether a patent application presents a claim that covers a product or process related to COVID– 19 and whether the product or process is subject to an applicable FDA approval for COVID–19 use. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2023–03216 Filed 2–13–23; 8:45 am] BILLING CODE 3510–16–P COMMODITY FUTURES TRADING COMMISSION Sunshine Act Meetings FEDERAL REGISTER CITATION OF PREVIOUS ANNOUNCEMENT: 88 FR 8262, February 8, 2023. PREVIOUSLY ANNOUNCED TIME AND DATE OF THE MEETING: 1:00 p.m. EST, Wednesday, February 15, 2023. The place of the meeting has changed. This meeting will now take place virtually. The meeting time and date, Closed status, and matters to be considered, as previously announced, remain unchanged. CHANGES IN THE MEETING: CONTACT PERSON FOR MORE INFORMATION: Christopher Kirkpatrick, 202–418–5964. E:\FR\FM\14FEN1.SGM 14FEN1

Agencies

[Federal Register Volume 88, Number 30 (Tuesday, February 14, 2023)]
[Notices]
[Pages 9492-9495]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-03066]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2022-0045]


Request for Comments Regarding Artificial Intelligence and 
Inventorship

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

[[Page 9493]]


ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) plays an 
important role in incentivizing and protecting innovation, including 
innovation enabled by artificial intelligence (AI), to ensure continued 
U.S. leadership in AI and other emerging technologies (ET). In June 
2022, the USPTO announced the formation of the AI/ET Partnership, which 
provides an opportunity to bring stakeholders together through a series 
of engagements to share ideas, feedback, experiences, and insights on 
the intersection of intellectual property and AI/ET. To build on the 
AI/ET Partnership efforts, the USPTO is seeking stakeholder input on 
the current state of AI technologies and inventorship issues that may 
arise in view of the advancement of such technologies, especially as AI 
plays a greater role in the innovation process. As outlined in sections 
II to IV below, the USPTO is pursuing three main avenues of engagement 
with stakeholders to inform its future efforts on inventorship and 
promoting AI-enabled innovation: a series of stakeholder engagement 
sessions; collaboration with academia through scholarly research; and a 
request for written comments to the questions identified in section IV. 
The USPTO encourages stakeholder engagement through one or more of 
these avenues.

DATES: Submissions to the special issue of the ``Journal of the Patent 
and Trademark Office Society'' may be made directly to the journal at 
[email protected] by July 1, 2023. Comments, in general, and responses 
to the questions identified in section IV must be received by May 15, 
2023 to ensure consideration.

ADDRESSES: For reasons of Government efficiency, comments must be 
submitted through the Federal eRulemaking Portal at 
www.regulations.gov. To submit comments via the portal, enter docket 
number PTO-P-2022-0045 on the homepage and click ``Search.'' The site 
will provide a search results page listing all documents associated 
with this docket. Find a reference to this notice and click on the 
``Comment Now!'' icon, complete the required fields, and enter or 
attach your comments. Attachments to electronic comments will be 
accepted in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format. Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.
    Visit the Federal eRulemaking Portal website (www.regulations.gov) 
for additional instructions on providing comments via the portal. If 
electronic submission of comments is not feasible due to a lack of 
access to a computer and/or the internet, please contact the USPTO 
using the contact information below for special instructions.

FOR FURTHER INFORMATION CONTACT: Matthew Sked, Senior Legal Advisor, 
Office of Patent Legal Administration, at 571-272-7627. Inquiries can 
also be sent to [email protected].

SUPPLEMENTARY INFORMATION: 

I. Background

    In August 2019, the USPTO issued a request for public comments on 
patenting AI inventions. Among the various policy questions raised in 
the notice, the USPTO requested comments on several issues involving 
inventorship, such as the different ways a natural person can 
contribute to the conception of an AI invention and whether current 
laws and regulations involving inventorship need to be revised to 
consider contributions from entities other than natural persons. See 
Request for Comments on Patenting Artificial Intelligence Inventions, 
84 FR 44889 (August 27, 2019). In October 2020, the USPTO published a 
report titled ``Public Views on Artificial Intelligence and 
Intellectual Property Policy,'' which took a comprehensive look at the 
stakeholder feedback received in response to the questions posed in the 
August 2019 notice.\1\ With respect to inventorship, some commenters 
took the position that current AI could not invent without human 
intervention and that current inventorship law is equipped to handle 
inventorship that involves AI technologies. However, other commenters 
indicated that AI can potentially contribute to the creation of 
inventions in a variety of ways, including generating patentable 
inventions to which no human has made an inventive contribution.\2\
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    \1\ The full report is available at www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf.
    \2\ See, e.g., Response from Ryan Abbott (November 5, 2019) at 
3-4, www.uspto.gov/sites/default/files/documents/Ryan-Abbott_RFC-84-FR-44889.pdf.
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    Subsequently, in June 2022, the USPTO held its inaugural AI/ET 
Partnership meeting. During a panel discussion on ``Inventorship and 
the Advent of Machine Generated Inventions,'' there was a discussion 
among the panelists about AI's increasing role in innovation. Although 
there was consensus that AI cannot ``conceive'' of inventions, some 
panelists contended that AI is merely a tool like any other tool used 
in the inventive process, while others pointed to situations in which 
AI systems can output patentable inventions or contribute at the level 
of a joint inventor. Details and a recording of the inaugural AI/ET 
Partnership event are available at https://www.uspto.gov/about-us/events/aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy.
    While the USPTO was exploring the contours of inventorship law with 
respect to AI generated inventions, the USPTO received applications 
asserting that an AI machine was the inventor. On April 22, 2020, the 
USPTO issued a pair of decisions denying petitions to name Device for 
Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as 
the inventor. The USPTO's decision explained that under current U.S. 
patent laws, inventorship is limited to a natural person(s). The 
USPTO's decision was upheld on September 2, 2021 in a decision from the 
United States District Court for the Eastern District of Virginia. 
Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021). On appeal, the 
Court of Appeals for the Federal Circuit (Federal Circuit) affirmed the 
holding that an inventor must be a natural person. Thaler v. Vidal, 43 
F.4th 1207, 1210 (Fed. Cir. 2022). Specifically, the Federal Circuit 
held that 35 U.S.C. 100(f) defines an inventor as ``the individual or, 
if a joint invention, the individuals collectively who invented or 
discovered the subject matter of the invention.'' The court found that 
based on Supreme Court precedent, an ``individual'' ordinarily means a 
human being unless Congress provided some indication that a different 
meaning was intended. Id. at 1211 (citing Mohamad v. Palestinian Auth. 
566 U.S. 449, 454 (2012)). Based on the finding that there is nothing 
in the Patent Act to indicate Congress intended a different meaning, 
and that the Act includes other language to support the conclusion that 
an ``individual'' in the Act refers to a natural person, the court 
concluded that an inventor must be a natural person. Id. The court 
explained, however, that it was not confronted with ``the question of 
whether inventions made by human beings with the assistance of AI are 
eligible for patent protection.'' Thaler v. Vidal, 43 F.4th at 1213.
    In addition, there is a growing consensus that AI is playing a 
greater role in the innovation process (i.e., AI is being used to drive 
innovation in other

[[Page 9494]]

technologies). For example, at the AI/ET Partnership meetings, the 
USPTO heard that new AI models are being used in drug discovery, 
personalized medicine, and chip design. As noted above, some 
stakeholders have indicated that technologies using machine learning 
may be able to contribute at the level of a joint inventor in some 
inventions today. Further, Congress has taken note of the increased 
role that AI plays in innovation. On October 27, 2022, Senators Thom 
Tillis and Chris Coons called on the USPTO and the U.S. Copyright 
Office to jointly create a national commission on AI to consider 
changes to existing law to incentivize future AI-related innovations 
and creations.
    In the wake of the Thaler decision and in view of the current state 
of AI and machine learning, there remains uncertainty around AI 
inventorship. This uncertainty is becoming more immediate as AI, 
particularly machine learning, systems make greater contributions to 
innovation, as noted above. If these technologies are in fact capable 
of significantly contributing to the creation of an invention, the 
question arises whether the current state of the law provides patent 
protection for these inventions. Accordingly, in order to foster and 
promote AI-enabled innovation, the USPTO requests further stakeholder 
feedback on the current state of AI technology in the invention 
creation process and on how to address inventions created with 
significant AI contributions.

II. Stakeholder Engagement Sessions

    The USPTO will hold stakeholder engagement sessions regarding 
inventorship and AI-enabled innovation. Information about these 
sessions will be announced in the Federal Register and posted on the 
AI/ET Partnership web page at www.uspto.gov/aipartnership.

III. Collaboration With Academia

    The USPTO also seeks to foster increased academic engagement on 
inventorship and AI-enabled innovation. Universities and academic 
researchers play a multifaceted role in illuminating AI's role in 
innovation. Many of the technical breakthroughs that underpin AI's 
potential ability to contribute to the inventive process are inspired 
by work in university research labs. Legal and policy scholars from 
those same institutions can help explore the resulting implications 
from an intellectual property perspective. The USPTO encourages 
universities to support research and related academic initiatives--
particularly those that foster interdisciplinary collaboration between 
AI technical researchers, legal scholars, and other contributors--that 
can help address open questions in this area, such as the ones posed in 
section IV of this notice, from a scholarly perspective. When 
appropriate, the USPTO will consider opportunities to engage and 
collaborate with such academic initiatives via the AI/ET Partnership.
    The USPTO welcomes novel scholarship that can inform its future 
efforts as to inventorship and AI-enabled innovation. Recognizing the 
value of a diversity of perspectives, the USPTO invites both 
descriptive and normative contributions from a variety of disciplines, 
including but not limited to computer science, law, public policy, 
economics, applied mathematics, and cognitive science. The ``Journal of 
the Patent and Trademark Office Society'' plans to publish a special 
issue focused on inventorship and AI-enabled innovation. Submissions 
for this special issue may be made directly to the journal at 
[email protected] by July 1, 2023.\3\ The USPTO will closely monitor 
scholarship published in this and other venues for helpful insights 
that advance our understanding of current inventorship doctrine, the 
present and future capabilities of AI systems relevant to the inventive 
process, and considerations about whether the U.S. patent system should 
be modified.
---------------------------------------------------------------------------

    \3\ The ``Journal of the Patent and Trademark Office Society'' 
is independently edited and published under the direction of a Board 
of Governors appointed by the Patent and Trademark Office Society. 
Although members of the Board of Governors and the publication staff 
are employees of the USPTO, their involvement with the journal is in 
a strictly personal capacity. Note that due to the limited space 
available in the print volume, submission to the journal does not 
guarantee publication. Selected articles must comply with the 
journal's publication standards, including, but not limited to, 
being an original work and substantially not duplicative of recent 
or upcoming articles. The terms and conditions of the journal's 
article publication process are available at www.jptos.org/authorcontract.
---------------------------------------------------------------------------

IV. Questions for Public Comment

    The USPTO invites written responses from the public to the 
following questions:
    1. How is AI, including machine learning, currently being used in 
the invention creation process? Please provide specific examples. Are 
any of these contributions significant enough to rise to the level of a 
joint inventor if they were contributed by a human?
    2. How does the use of an AI system in the invention creation 
process differ from the use of other technical tools?
    3. If an AI system contributes to an invention at the same level as 
a human who would be considered a joint inventor, is the invention 
patentable under current patent laws? For example:
    a. Could 35 U.S.C. 101 and 115 be interpreted such that the Patent 
Act only requires the listing of the natural person(s) who invent(s), 
such that inventions with additional inventive contributions from an AI 
system can be patented as long as the AI system is not listed as an 
inventor?
    b. Does the current jurisprudence on inventorship and joint 
inventorship, including the requirement of conception, support the 
position that only the listing of the natural person(s) who invent(s) 
is required, such that inventions with additional inventive 
contributions from an AI system can be patented as long as the AI 
system is not listed as an inventor?
    c. Does the number of human inventors impact the answer to the 
questions above?
    4. Do inventions in which an AI system contributed at the same 
level as a joint inventor raise any significant ownership issues? For 
example:
    a. Do ownership rights vest solely in the natural person(s) who 
invented or do those who create, train, maintain, or own the AI system 
have ownership rights as well? What about those whose information was 
used to train the AI system?
    b. Are there situations in which AI-generated contributions are not 
owned by any entity and therefore part of the public domain?
    5. Is there a need for the USPTO to expand its current guidance on 
inventorship to address situations in which AI significantly 
contributes to an invention? How should the significance of a 
contribution be assessed?
    6. Should the USPTO require applicants to provide an explanation of 
contributions AI systems made to inventions claimed in patent 
applications? If so, how should that be implemented, and what level of 
contributions should be disclosed? Should contributions to inventions 
made by AI systems be treated differently from contributions made by 
other (i.e., non-AI) computer systems?
    7. What additional steps, if any, should the USPTO take to further 
incentivize AI-enabled innovation (i.e., innovation in which machine 
learning or other computational techniques play a significant role in 
the invention creation process)?
    8. What additional steps, if any, should the USPTO take to mitigate 
harms and risks from AI-enabled innovation? In what ways could the 
USPTO promote the best practices outlined in the Blueprint for an AI 
Bill

[[Page 9495]]

of Rights 4 and the AI Risk Management Framework 
5 within the innovation ecosystem?
---------------------------------------------------------------------------

    \4\ See https://www.whitehouse.gov/ostp/ai-bill-of-rights/.
    \5\ See https://www.nist.gov/itl/ai-risk-management-framework.
---------------------------------------------------------------------------

    9. What statutory changes, if any, should be considered as to U.S. 
inventorship law, and what consequences do you foresee for those 
statutory changes? For example:
    a. Should AI systems be made eligible to be listed as an inventor? 
Does allowing AI systems to be listed as an inventor promote and 
incentivize innovation?
    b. Should listing an inventor remain a requirement for a U.S. 
patent?
    10. Are there any laws or practices in other countries that 
effectively address inventorship for inventions with significant 
contributions from AI systems?
    11. The USPTO plans to continue engaging with stakeholders on the 
intersection of AI and intellectual property. What areas of focus 
(e.g., obviousness, disclosure, data protection) should the USPTO 
prioritize in future engagements?

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-03066 Filed 2-13-23; 8:45 am]
BILLING CODE 3510-16-P
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