Impact of the Proliferation of AI on Prior Art and PHOSITA: Notice of Public Listening Session, 55588-55590 [2024-14691]
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Federal Register / Vol. 89, No. 129 / Friday, July 5, 2024 / Notices
This new affirmative finding is
effective for the 5-year period of April
1, 2024, through March 31, 2029.
FOR FURTHER INFORMATION CONTACT:
Justin Greenman, West Coast Region,
NMFS, by mail: 501 W Ocean Blvd.,
Suite 4200, Long Beach, CA 90802,
email: justin.greenman@noaa.gov, or
phone: (562) 980–3264.
SUPPLEMENTARY INFORMATION: The
MMPA, 16 U.S.C. 1361 et seq., allows
for importation into the United States of
yellowfin tuna harvested by purse seine
vessels in the ETP from a nation with
jurisdiction over purse seine vessels
with carrying capacity greater than 400
short tons that harvest tuna in the ETP,
only if the nation has an ‘‘affirmative
finding’’ issued by the NMFS Assistant
Administrator. See section 101(a)(2)(B)
of the MMPA, 16 U.S.C. 1371(a)(2)(B);
see also 50 CFR 216.24(f)(6)(i). If
requested by the government of such a
nation, the Assistant Administrator will
determine whether to make an
affirmative finding based upon
documentary evidence provided by the
government, the IATTC, or the
Department of State.
The affirmative finding process
requires that the harvesting nation is
meeting its obligations under the AIDCP
and its obligations of membership in the
IATTC. Every 5 years, the government of
the harvesting nation must request a
new affirmative finding and submit the
required documentary evidence directly
to the Assistant Administrator. On an
annual basis, NMFS must determine
whether the harvesting nation continues
to meet the requirements of their 5-year
affirmative finding. NMFS does this by
reviewing the documentary evidence
from the last year. A nation may provide
information related to compliance with
AIDCP and IATTC measures directly to
NMFS on an annual basis or may
authorize the IATTC to release the
information to NMFS to annually renew
an affirmative finding determination
without an application from the
harvesting nation.
An affirmative finding will be
terminated, in consultation with the
Secretary of State, if the Assistant
Administrator determines that the
requirements of 50 CFR 216.24(f) are no
longer being met or that a nation is
consistently failing to take enforcement
actions on violations, thereby
diminishing the effectiveness of the
AIDCP.
As a part of the affirmative finding
process set forth in 50 CFR 216.24(f)(8),
the Assistant Administrator considered
documentary evidence submitted by the
Government of Colombia and obtained
from the IATTC, and has determined
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that Colombia has met the MMPA’s
requirements to receive a new 5-year
affirmative finding.
After consultation with the
Department of State, the Assistant
Administrator issued a new 5-year
affirmative finding to Colombia,
allowing the importation into the
United States of yellowfin tuna and
products derived from yellowfin tuna
harvested in the ETP by purse seine
vessels operating under Colombia’s
jurisdiction or exported from Colombia.
Issuance of a new 5-year affirmative
finding for Colombia does not affect
implementation of an intermediary
nation embargo under 50 CFR
216.24(f)(9), which applies to exports
from a nation that exports to the United
States yellowfin tuna or yellowfin tuna
products that was subject to a ban on
importation into the United States
under section 101(a)(2)(B) of the MMPA,
16 U.S.C. 1371(a)(2)(B).
This new affirmative finding for
Colombia is for the 5-year period of
April 1, 2024, through March 31, 2029,
subject to subsequent annual reviews by
NMFS.
Dated: June 25, 2024.
Janet Coit,
Assistant Administrator for Fisheries,
National Marine Fisheries Service.
[FR Doc. 2024–14738 Filed 7–3–24; 8:45 am]
BILLING CODE 3510–22–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO–P–2024–0032]
Impact of the Proliferation of AI on
Prior Art and PHOSITA: Notice of
Public Listening Session
United States Patent and
Trademark Office, U.S. Department of
Commerce.
ACTION: Notice of public listening
session.
AGENCY:
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). On April
30, 2024, the USPTO published a
request for comments (RFC) in the
Federal Register regarding the impact of
the proliferation of AI on prior art, the
knowledge of a person having ordinary
skill in the art (PHOSITA), and
determinations of patentability made in
view of the foregoing. In furtherance of
its AI/ET Partnership, the USPTO
SUMMARY:
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hereby announces a public listening
session on July 25, 2024, titled
‘‘Listening Session on the Impact of the
Proliferation of AI on Prior Art and
PHOSITA.’’ The purpose of the listening
session is to obtain public input from
stakeholders on the impact of the
proliferation of AI on prior art and
PHOSITA, as set forth in the questions
for public comment of the RFC. The
USPTO expects that the feedback
received in this listening session and
the written responses received for the
RFC will help the USPTO evaluate the
need for further guidance on these
matters, aid in the development of any
such guidance, and help inform the
USPTO’s work in the courts and in
providing technical advice to Congress.
DATES: The Listening Session on the
Impact of Proliferation of AI on Prior
Art and PHOSITA will be held on July
25, 2024, from 10:00 a.m. to 3:00 p.m.
ET. Persons seeking to speak at the
listening session, either virtually or in
person, must register by 8:00 p.m. ET on
July 19, 2024, at the website provided in
the ADDRESSES section of this notice.
Persons seeking to attend, either
virtually or in person, but not speak at
the event, must register by 8:00 a.m. ET
on July 25, 2024, at the website
provided in the ADDRESSES section of
this notice.
ADDRESSES: Register to speak or attend
the listening session at www.uspto.gov/
initiatives/artificial-intelligence/ai-andemerging-technology-partnershipengagement-and-events. The listening
session will take place virtually and in
person at the USPTO Headquarters,
National Inventors Hall of Fame
Museum, 600 Dulany Street,
Alexandria, VA 22314. Registration is
required to speak for both virtual and
in-person attendance. Seating is limited
for in-person attendance. Registrants
must indicate whether they are
registering as a listen-only attendee or as
a speaker participant.
The public meeting will be physically
accessible to people with disabilities.
Individuals requiring accommodation,
such as sign language interpretation or
other ancillary aids, should
communicate their needs to an
individual listed under the FOR FURTHER
INFORMATION CONTACT section of this
notice at least seven business days prior
to the public meeting.
FOR FURTHER INFORMATION CONTACT:
Srilakshmi Kumar, Senior Advisor,
Office of the Under Secretary, 571–272–
7769, or Aleksandr Kerzhner,
Supervisory Patent Examiner, 571–270–
1760. You can also send inquiries to
AIPartnership@uspto.gov.
SUPPLEMENTARY INFORMATION:
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Federal Register / Vol. 89, No. 129 / Friday, July 5, 2024 / Notices
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I. Background
To continue its support for the
National AI Initiative Act of 2020,
which became law on January 1, 2021,
the USPTO announced in June 2022 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 and the USPTO’s
recent AI-related efforts associated with
Executive Order 14110,1 on April 30,
2024, the USPTO issued an RFC titled
‘‘Request for Comments on the Impact of
Proliferation of AI on Prior Art, the
Knowledge of a Person Having Ordinary
Skill in the Art, and Determinations of
Patentability Made in View of the
Foregoing’’ (89 FR 34217, April 30,
2024) (available at
www.federalregister.gov/documents/
2024/04/30/2024-08969/request-forcomments-regarding-the-impact-of-theproliferation-of-artificial-intelligenceon-prior-). The RFC provides an
overview of prior art considerations and
discusses some concerns relevant to AIgenerated prior art, discusses the
current PHOSITA assessment as it is
applied by the USPTO and the courts,
and poses 15 questions for public
comment on the impact of AI on prior
art and the PHOSITA assessment.
II. Public Listening Session
The USPTO will hold a public
listening session virtually and in person
at the USPTO Headquarters in
Alexandria, Virginia, on July 25, 2024.
Requests to participate as a speaker
must include:
1. The name of the person desiring to
participate;
2. The organization(s) that person
represents, if any;
3. Contact information (zip code,
telephone number, and email address);
4. Information on the specific topic or
question(s) from the RFC of interest to
the speaker (or their organization); and
5. A summary of comments to be
articulated during the listening session
(discussed further below).
Speaking slots are limited; preference
will be given to speakers based on the
specific topic or question(s) provided in
the request to participate. Selected
speakers may be grouped by topic.
Topics and speakers will be announced
a few days prior to the event and
listening session. Speakers may attend
1 Executive Order on the Safe, Secure, and
Trustworthy Development and Use of Artificial
Intelligence, Executive Order 14110, 88 FR 75191
(November 1, 2023).
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virtually or in person and are required
to submit their remarks for the listening
session in advance through the Federal
eRulemaking Portal at
www.regulations.gov.
Each speaker will be informed of their
assigned time slot in advance. Time
slots will be at least three minutes, but
may be longer, depending on the
number of speakers registered. USPTO
personnel may reserve time to ask
questions of particular speakers after the
delivery of a speaker’s remarks.
III. Questions From the RFC on the
Impact of AI on Prior Art and
PHOSITA for Discussion at the
Listening Session
The purpose of the listening session is
to obtain public input from a broad
group of stakeholders regarding the
impact of the proliferation of AI on prior
art and PHOSITA, as set forth in the
questions for public comment of the
RFC.
We encourage interested speakers to
address the questions posed in the RFC
and to submit research and data, if any,
that inform their comments on these
questions. Official written comments to
the questions raised in the RFC should
be submitted as outlined in the RFC. For
convenience, a copy of the questions
from the RFC is provided below in their
entirety.
A. The Impact of AI on Prior Art
1. In what manner, if any, does 35
U.S.C. 102 presume or require that a
prior art disclosure be authored and/or
published by humans? In what manner,
if any, does non-human authorship of a
disclosure affect its availability as prior
art under 35 U.S.C. 102?
2. What types of AI-generated
disclosures, if any, would be pertinent
to patentability determinations made by
the USPTO? How are such disclosures
currently being made available to the
public? In what other ways, if any,
should such disclosures be made
available to the public?
3. If a party submits to the Office a
printed publication or other evidence
that the party knows was AI-generated,
should that party notify the USPTO of
this fact, and if so, how? What duty, if
any, should the party have to determine
whether a disclosure was AI-generated?
4. Should an AI-generated disclosure
be treated differently than a non-AIgenerated disclosure for prior art
purposes? For example:
a. Should the treatment of an AIgenerated disclosure as prior art depend
on the extent of human contribution to
the AI-generated disclosure?
b. How should the fact that an AIgenerated disclosure could include
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incorrect information (e.g.,
hallucinations) affect its consideration
as a prior art disclosure?
c. How does the fact that a disclosure
is AI-generated impact other prior art
considerations, such as operability,
enablement, and public accessibility?
5. At what point, if ever, could the
volume of AI-generated prior art be
sufficient to create an undue barrier to
the patentability of inventions? At what
point, if ever, could the volume of AIgenerated prior art be sufficient to
detract from the public accessibility of
prior art (i.e., if a PHOSITA exercising
reasonable diligence may not be able to
locate relevant disclosures)?
B. The Impact of AI on a PHOSITA
6. Does the term ‘‘person’’ in the
PHOSITA assessment presume or
require that the ‘‘person’’ is a natural
person, i.e., a human? How, if at all,
does the availability of AI as a tool affect
the level of skill of a PHOSITA as AI
becomes more prevalent? For example,
how does the availability of AI affect the
analysis of the PHOSITA factors, such
as the rapidity with which innovations
are made and the sophistication of the
technology?
7. How, if at all, should the USPTO
determine which AI tools are in
common use and whether these tools
are presumed to be known and used by
a PHOSITA in a particular art?
8. How, if at all, does the availability
to a PHOSITA of AI as a tool impact:
a. Whether something is well-known
or common knowledge in the art?
b. How a PHOSITA would understand
the meaning of claim terms?
9. In view of the availability to a
PHOSITA of AI as a tool, how, if at all,
is an obviousness determination
affected, including when:
a. Determining whether art is
analogous to the claimed invention,
given AI’s ability to search across art
fields? Does the ‘‘analogous’’ art
standard still make sense in view of AI’s
capabilities?
b. Determining whether there is a
rationale to modify the prior art,
including the example rationales
suggested by KSR (MPEP 2143,
subsection I) (e.g., ‘‘obvious to try’’) or
the scientific principle or legal
precedent rationales (MPEP 2144)?
c. Determining whether the
modification yields predictable results
with a reasonable expectation of success
(e.g., how to evaluate the predictability
of results in view of the stochasticity (or
lack of predictability) of an AI system)?
d. Evaluating objective indicia of
obviousness or nonobviousness (e.g.,
commercial success, long felt but
unsolved needs, failure of others,
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Federal Register / Vol. 89, No. 129 / Friday, July 5, 2024 / Notices
simultaneous invention, unexpected
results, copying, etc.)?
10. How, if at all, does the recency of
the information used to train an AI
model or that ingested by an AI model
impact the PHOSITA assessment when
that assessment may focus on an earlier
point in time (e.g., the effective filing
date of the claimed invention for an
application examined under the FirstInventor-to-File provisions of the
America Invents Act)?
11. How, if at all, does the availability
to a PHOSITA of AI as a tool impact the
enablement determination under 35
U.S.C. 112(a)? Specifically, how does it
impact the consideration of the In re
Wands factors (MPEP 2164.01(a)) in
ascertaining whether the
experimentation required to enable the
full scope of the claimed invention is
reasonable or undue?
C. The Implications of AI That Could
Require Updated Examination
Guidance and/or Legislative Change
12. What guidance from the USPTO
on the impact of AI on prior art and on
the knowledge of a PHOSITA, in
connection with patentability
determinations made by the Office,
would be helpful?
13. In addition to the considerations
discussed above, in what other ways, if
any, does the proliferation of AI impact
patentability determinations made by
the Office (e.g., under 35 U.S.C. 101,
102, 103, 112, etc.)?
14. Are there any laws or practices in
other countries that effectively address
any of the questions above? If so, please
identify them and explain how they can
be adapted to fit within the framework
of U.S. patent law.
15. Should title 35 of the U.S. Code
be amended to account for any of the
considerations set forth in this notice,
and if so, what specific amendments do
you propose, and why?
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2024–14691 Filed 7–3–24; 8:45 am]
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BILLING CODE 3510–16–P
COMMITTEE FOR PURCHASE FROM
PEOPLE WHO ARE BLIND OR
SEVERELY DISABLED
Procurement List; Proposed Deletions
Committee for Purchase From
People Who Are Blind or Severely
Disabled.
ACTION: Proposed deletions from the
Procurement List.
AGENCY:
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The Committee is proposing
to delete service(s) to the Procurement
List that were furnished by nonprofit
agencies employing persons who are
blind or have other severe disabilities.
DATES: Comments must be received on
or before: August 4, 2024.
ADDRESSES: Committee for Purchase
From People Who Are Blind or Severely
Disabled, 355 E Street SW, Suite 325,
Washington, DC 20024.
FOR FURTHER INFORMATION CONTACT: For
further information or to submit
comments contact: Michael R.
Jurkowski, Telephone: (703) 489–1322
or email CMTEFedReg@AbilityOne.gov.
SUPPLEMENTARY INFORMATION: This
notice is published pursuant to 41
U.S.C. 8503(a)(2) and 41 CFR 51–2.3. Its
purpose is to provide interested persons
an opportunity to submit comments on
the proposed actions.
SUMMARY:
Deletions
The following service(s) are proposed
for deletion from the Procurement List:
Service(s)
Service Type: Janitorial/Custodial
Mandatory for: BLM, Billings Dispatch
Center, 1299 Rimtop Drive, Billings, MT
Authorized Source of Supply: Community
Option Resource Enterprises, Inc. (COR
Enterprises), Billings, MT
Contracting Activity: BUREAU OF LAND
MANAGEMENT, MT—MONTANA
STATE OFFICE
Service Type: Janitorial/Custodial
Mandatory for: BLM, Fire Cache Office
Facilities, 551 Northview Drive, Billings,
MT
Authorized Source of Supply: Community
Option Resource Enterprises, Inc. (COR
Enterprises), Billings, MT
Contracting Activity: BUREAU OF LAND
MANAGEMENT, MT—MONTANA
STATE OFFICE
Service Type: Document Destruction
Mandatory for: NARA, Denver Federal
Record Center (Rocky Mtn Reg): Building
48, 6th and Kipling, Denver, CO
Authorized Source of Supply: Bayaud
Enterprises, Inc., Denver, CO
Contracting Activity: NATIONAL ARCHIVES
AND RECORDS ADMINISTRATION,
NARA FACILITIES
Service Type: Courier Service
Mandatory for: Department of Veterans
Affairs, Michael E. DeBakey VA Medical
Center, 2002 Holcombe Boulevard,
Houston, TX
Contracting Activity: VETERANS AFFAIRS,
DEPARTMENT OF, 256–NETWORK
CONTRACT OFC 16(00256)
Service Type: Grounds Maintenance
Mandatory for: Federal Aviation
Administration, Norfolk Air Traffic
Control Tower, Virginia Beach, VA and
Patrick Henry Field Air Traffic Control
Tower, Newport News, VA
Authorized Source of Supply: Portco, Inc.,
Portsmouth, VA
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Contracting Activity: FEDERAL AVIATION
ADMINISTRATION, 697DCK
REGIONAL ACQUISITIONS SVCS
Michael R. Jurkowski,
Director, Business Operations.
[FR Doc. 2024–14736 Filed 7–3–24; 8:45 am]
BILLING CODE 6353–01–P
COMMITTEE FOR PURCHASE FROM
PEOPLE WHO ARE BLIND OR
SEVERELY DISABLED
Procurement List; Additions
Committee for Purchase From
People Who Are Blind or Severely
Disabled.
ACTION: Additions to the Procurement
List.
AGENCY:
This action adds service(s) to
the Procurement List that will be
furnished by nonprofit agencies
employing persons who are blind or
have other severe disabilities.
DATES: Date added to the Procurement
List: August 4, 2024
ADDRESSES: Committee for Purchase
From People Who Are Blind or Severely
Disabled, 355 E Street SW, Suite 325,
Washington, DC 20024.
FOR FURTHER INFORMATION CONTACT:
Michael R. Jurkowski, Telephone: (703)
489–1322, or email CMTEFedReg@
AbilityOne.gov.
SUMMARY:
SUPPLEMENTARY INFORMATION:
Additions
On 4/12/2024 (89 FR 25867) and
5/24/2024 (89 FR 45859), the Committee
for Purchase From People Who Are
Blind or Severely Disabled (operating as
the U.S. AbilityOne Commission)
published an initial notice of proposed
additions to the Procurement List. The
Committee determined that the
service(s) listed below are suitable for
procurement by the Federal Government
and has added these service(s) to the
Procurement List as a mandatory
purchase for contracting activities
listed. In accordance with 41 CFR 51–
5.3(b), the mandatory purchase
requirement is limited to those
contracting activities at the locations
listed, and in accordance with 41 CFR
51–5.2, the Committee has authorized
nonprofit agencies listed as the
authorized source(s) of supply.
After consideration of the material
presented to it concerning capability of
qualified nonprofit agencies to provide
the service(s) and impact of the
additions on the current or most recent
contractors, the Committee has
determined that the service(s) listed
below are suitable for procurement by
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]]>Agencies
[Federal Register Volume 89, Number 129 (Friday, July 5, 2024)]
[Notices]
[Pages 55588-55590]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-14691]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2024-0032]
Impact of the Proliferation of AI on Prior Art and PHOSITA:
Notice of Public Listening Session
AGENCY: United States Patent and Trademark Office, U.S. Department of
Commerce.
ACTION: Notice of public listening session.
-----------------------------------------------------------------------
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). On April
30, 2024, the USPTO published a request for comments (RFC) in the
Federal Register regarding the impact of the proliferation of AI on
prior art, the knowledge of a person having ordinary skill in the art
(PHOSITA), and determinations of patentability made in view of the
foregoing. In furtherance of its AI/ET Partnership, the USPTO hereby
announces a public listening session on July 25, 2024, titled
``Listening Session on the Impact of the Proliferation of AI on Prior
Art and PHOSITA.'' The purpose of the listening session is to obtain
public input from stakeholders on the impact of the proliferation of AI
on prior art and PHOSITA, as set forth in the questions for public
comment of the RFC. The USPTO expects that the feedback received in
this listening session and the written responses received for the RFC
will help the USPTO evaluate the need for further guidance on these
matters, aid in the development of any such guidance, and help inform
the USPTO's work in the courts and in providing technical advice to
Congress.
DATES: The Listening Session on the Impact of Proliferation of AI on
Prior Art and PHOSITA will be held on July 25, 2024, from 10:00 a.m. to
3:00 p.m. ET. Persons seeking to speak at the listening session, either
virtually or in person, must register by 8:00 p.m. ET on July 19, 2024,
at the website provided in the ADDRESSES section of this notice.
Persons seeking to attend, either virtually or in person, but not speak
at the event, must register by 8:00 a.m. ET on July 25, 2024, at the
website provided in the ADDRESSES section of this notice.
ADDRESSES: Register to speak or attend the listening session at
www.uspto.gov/initiatives/artificial-intelligence/ai-and-emerging-technology-partnership-engagement-and-events. The listening session
will take place virtually and in person at the USPTO Headquarters,
National Inventors Hall of Fame Museum, 600 Dulany Street, Alexandria,
VA 22314. Registration is required to speak for both virtual and in-
person attendance. Seating is limited for in-person attendance.
Registrants must indicate whether they are registering as a listen-only
attendee or as a speaker participant.
The public meeting will be physically accessible to people with
disabilities. Individuals requiring accommodation, such as sign
language interpretation or other ancillary aids, should communicate
their needs to an individual listed under the FOR FURTHER INFORMATION
CONTACT section of this notice at least seven business days prior to
the public meeting.
FOR FURTHER INFORMATION CONTACT: Srilakshmi Kumar, Senior Advisor,
Office of the Under Secretary, 571-272-7769, or Aleksandr Kerzhner,
Supervisory Patent Examiner, 571-270-1760. You can also send inquiries
to [email protected].
SUPPLEMENTARY INFORMATION:
[[Page 55589]]
I. Background
To continue its support for the National AI Initiative Act of 2020,
which became law on January 1, 2021, the USPTO announced in June 2022
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 and the USPTO's recent AI-related efforts associated with
Executive Order 14110,\1\ on April 30, 2024, the USPTO issued an RFC
titled ``Request for Comments on the Impact of Proliferation of AI on
Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art,
and Determinations of Patentability Made in View of the Foregoing'' (89
FR 34217, April 30, 2024) (available at www.federalregister.gov/documents/2024/04/30/2024-08969/request-for-comments-regarding-the-impact-of-the-proliferation-of-artificial-intelligence-on-prior-). The
RFC provides an overview of prior art considerations and discusses some
concerns relevant to AI-generated prior art, discusses the current
PHOSITA assessment as it is applied by the USPTO and the courts, and
poses 15 questions for public comment on the impact of AI on prior art
and the PHOSITA assessment.
---------------------------------------------------------------------------
\1\ Executive Order on the Safe, Secure, and Trustworthy
Development and Use of Artificial Intelligence, Executive Order
14110, 88 FR 75191 (November 1, 2023).
---------------------------------------------------------------------------
II. Public Listening Session
The USPTO will hold a public listening session virtually and in
person at the USPTO Headquarters in Alexandria, Virginia, on July 25,
2024.
Requests to participate as a speaker must include:
1. The name of the person desiring to participate;
2. The organization(s) that person represents, if any;
3. Contact information (zip code, telephone number, and email
address);
4. Information on the specific topic or question(s) from the RFC of
interest to the speaker (or their organization); and
5. A summary of comments to be articulated during the listening
session (discussed further below).
Speaking slots are limited; preference will be given to speakers
based on the specific topic or question(s) provided in the request to
participate. Selected speakers may be grouped by topic. Topics and
speakers will be announced a few days prior to the event and listening
session. Speakers may attend virtually or in person and are required to
submit their remarks for the listening session in advance through the
Federal eRulemaking Portal at www.regulations.gov.
Each speaker will be informed of their assigned time slot in
advance. Time slots will be at least three minutes, but may be longer,
depending on the number of speakers registered. USPTO personnel may
reserve time to ask questions of particular speakers after the delivery
of a speaker's remarks.
III. Questions From the RFC on the Impact of AI on Prior Art and
PHOSITA for Discussion at the Listening Session
The purpose of the listening session is to obtain public input from
a broad group of stakeholders regarding the impact of the proliferation
of AI on prior art and PHOSITA, as set forth in the questions for
public comment of the RFC.
We encourage interested speakers to address the questions posed in
the RFC and to submit research and data, if any, that inform their
comments on these questions. Official written comments to the questions
raised in the RFC should be submitted as outlined in the RFC. For
convenience, a copy of the questions from the RFC is provided below in
their entirety.
A. The Impact of AI on Prior Art
1. In what manner, if any, does 35 U.S.C. 102 presume or require
that a prior art disclosure be authored and/or published by humans? In
what manner, if any, does non-human authorship of a disclosure affect
its availability as prior art under 35 U.S.C. 102?
2. What types of AI-generated disclosures, if any, would be
pertinent to patentability determinations made by the USPTO? How are
such disclosures currently being made available to the public? In what
other ways, if any, should such disclosures be made available to the
public?
3. If a party submits to the Office a printed publication or other
evidence that the party knows was AI-generated, should that party
notify the USPTO of this fact, and if so, how? What duty, if any,
should the party have to determine whether a disclosure was AI-
generated?
4. Should an AI-generated disclosure be treated differently than a
non-AI-generated disclosure for prior art purposes? For example:
a. Should the treatment of an AI-generated disclosure as prior art
depend on the extent of human contribution to the AI-generated
disclosure?
b. How should the fact that an AI-generated disclosure could
include incorrect information (e.g., hallucinations) affect its
consideration as a prior art disclosure?
c. How does the fact that a disclosure is AI-generated impact other
prior art considerations, such as operability, enablement, and public
accessibility?
5. At what point, if ever, could the volume of AI-generated prior
art be sufficient to create an undue barrier to the patentability of
inventions? At what point, if ever, could the volume of AI-generated
prior art be sufficient to detract from the public accessibility of
prior art (i.e., if a PHOSITA exercising reasonable diligence may not
be able to locate relevant disclosures)?
B. The Impact of AI on a PHOSITA
6. Does the term ``person'' in the PHOSITA assessment presume or
require that the ``person'' is a natural person, i.e., a human? How, if
at all, does the availability of AI as a tool affect the level of skill
of a PHOSITA as AI becomes more prevalent? For example, how does the
availability of AI affect the analysis of the PHOSITA factors, such as
the rapidity with which innovations are made and the sophistication of
the technology?
7. How, if at all, should the USPTO determine which AI tools are in
common use and whether these tools are presumed to be known and used by
a PHOSITA in a particular art?
8. How, if at all, does the availability to a PHOSITA of AI as a
tool impact:
a. Whether something is well-known or common knowledge in the art?
b. How a PHOSITA would understand the meaning of claim terms?
9. In view of the availability to a PHOSITA of AI as a tool, how,
if at all, is an obviousness determination affected, including when:
a. Determining whether art is analogous to the claimed invention,
given AI's ability to search across art fields? Does the ``analogous''
art standard still make sense in view of AI's capabilities?
b. Determining whether there is a rationale to modify the prior
art, including the example rationales suggested by KSR (MPEP 2143,
subsection I) (e.g., ``obvious to try'') or the scientific principle or
legal precedent rationales (MPEP 2144)?
c. Determining whether the modification yields predictable results
with a reasonable expectation of success (e.g., how to evaluate the
predictability of results in view of the stochasticity (or lack of
predictability) of an AI system)?
d. Evaluating objective indicia of obviousness or nonobviousness
(e.g., commercial success, long felt but unsolved needs, failure of
others,
[[Page 55590]]
simultaneous invention, unexpected results, copying, etc.)?
10. How, if at all, does the recency of the information used to
train an AI model or that ingested by an AI model impact the PHOSITA
assessment when that assessment may focus on an earlier point in time
(e.g., the effective filing date of the claimed invention for an
application examined under the First-Inventor-to-File provisions of the
America Invents Act)?
11. How, if at all, does the availability to a PHOSITA of AI as a
tool impact the enablement determination under 35 U.S.C. 112(a)?
Specifically, how does it impact the consideration of the In re Wands
factors (MPEP 2164.01(a)) in ascertaining whether the experimentation
required to enable the full scope of the claimed invention is
reasonable or undue?
C. The Implications of AI That Could Require Updated Examination
Guidance and/or Legislative Change
12. What guidance from the USPTO on the impact of AI on prior art
and on the knowledge of a PHOSITA, in connection with patentability
determinations made by the Office, would be helpful?
13. In addition to the considerations discussed above, in what
other ways, if any, does the proliferation of AI impact patentability
determinations made by the Office (e.g., under 35 U.S.C. 101, 102, 103,
112, etc.)?
14. Are there any laws or practices in other countries that
effectively address any of the questions above? If so, please identify
them and explain how they can be adapted to fit within the framework of
U.S. patent law.
15. Should title 35 of the U.S. Code be amended to account for any
of the considerations set forth in this notice, and if so, what
specific amendments do you propose, and why?
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2024-14691 Filed 7-3-24; 8:45 am]
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