Biden AI Order Sets Patent Office Deadline On Invention Controls

President Joe Biden’s executive order on artificial intelligence presses the US Patent and Trademark Office to accelerate its timeline for new guidance on eligibility and inventorship.

The Patent Office has previously sought input on whether AI can be credited as an inventor and floated the possibility of requesting comments on how the technology may alter what renders an invention too obvious for protection. The order now gives the agency four months to address AI’s role in inventions and less than a year to deliver broader guidelines on how the technology will affect intellectual property rights.

The guidance could create higher standards for patent protections and put guardrails around how much inventors can rely on AI, as companies invest heavily in using the emerging technology for innovations.

“The listening tour needs to wind down,” said former PTO deputy director Coke Morgan Stewart, who noted the office has already dedicated substantial time to these issues. The president is saying “the actual work of advising examiners on how to operate in this new paradigm needs to begin.”

Former PTO Director Andrei Iancu said the office has already laid a foundation to address the complex issues even under the new deadline.

“It’s not like the White House surprised the patent office with this executive order,” Iancu said, pointing to a September blog post on AI from current Director Kathi Vidal that mentioned the looming order.

The PTO didn’t respond to Bloomberg Law’s request for comment.

AI and Inventorship

The agency has been grappling with AI’s role in inventing both internally and externally since at least 2019. It has already declared AI can’t be a sole inventor, which the US Court of Appeals for the Federal Circuit affirmed last year. But there are still questions about where the line is drawn when human inventors use AI tools.

“If you’re using an AI machine as a tool, who exactly is the human inventor?” Iancu said, pointing to the issues the PTO will have to address during the next year. When, he added, does the machine add “so much to the conception that the human inventor contributes so little that they no longer qualify as an inventor?”

Within 120 days of the order, the PTO must publish guidance addressing these questions. That has to include examples where AI tools play different roles in the inventive process and instruction on how the issues should be analyzed by patent examiners.

Patent applications involving AI areincreasing and in 2020 accounted for more than 50% of technologies examined, according to Vidal’s blog post.

Patent applicants aren’t required to disclose their use of AI tools in inventions. The PTO may or may not address disclosure, Iancu said.

“120 days is a tight amount,” former PTO solicitor Nathan Kelley said of the order’s deadline. But the PTO has “a lot of experience with this particular issue already.”

Iancu solicited comments on the topic in 2019 and Vidal sought input earlier this year.

“There’s many, many examiners and people who think about these issues deeply,” Iancu said, and “they’re able, probably right now or very soon, to be able to generate these examples.”

Patent Eligibility

The order also asks the PTO to issue broader guidance in 270 days regarding other AI and IP issues. That could include new guidelines on “patent eligibility to address innovation in AI and emerging technologies.”

Courts and patent examiners have struggled to consistently draw the line between unpatentable ideas and patentable applications of abstract concepts since the US Supreme Court’s Alice decision. The ruling established a test blocking patent eligibility for claims that cover laws of nature, natural phenomena, or abstract ideas, and fail to transform them into an inventive concept.

“There’s a lot of concern in the inventor community that AI inventions are going to be considered abstract for some reason,” said Stewart, who led the Patent Office’s AI task force during her tenure. They think it’s not going to be “tangible of enough of an invention to get protection” because it’s similar to a mental process.

“Companies are investing billions in AI and if they’re gonna invest all this money and they’re not going to get protection, they’re going to view that as an innovation crisis,” she added.

An idea must be non-obvious to be patentable, which is tested by considering whether a person of ordinary skill in the art would find the invention obvious in light of established technology, including previous patents or academic articles.

Stewart said AI could generate combinations of existing art that “will make it impossible to innovate” in computer-focused areas like software or in the chemical arts. Still, she said, that could actually drive more true innovation in the long-term.

“But that transition period could be difficult to navigate for the office and for the innovation ecosystem,” she added.

Kelley said the time after the internet was invented could be instructive as the PTO finds the proper balance.

“We had a lot of claims to inventions which were basically, ‘Do this thing that we did before but use the internet to do it,’” he said.

Patent examiners’ use of AI tools creates another potential issue for consideration. The office must decide if it’s “fair” to combine references from “very different subject matters” that an AI system would link together but a human would not, he said.

“If we’re going to measure inventorship on sort of on a human-based scale, does that mean we also measure obviousness on a human-based scale?” Kelley said.

Iancu said the PTO isn’t close to “eliminating the human examiner” in the process and called generating stronger patents a “forever task.”

“No matter how good your examiner is, or how many examiners you have, or how much time you give one examiner, the amount of prior art that they have to search grows continuously and exponentially,” he said.

Collaboration with the Copyright Office

The order also tasks Vidal with consulting with the Copyright Office on subjects including the scope of protection for works made using AI and the treatment of copyrighted works in AI training. Within 270 days of the order—or 180 days after the Copyright Office publishes its AI study, if that comes later—the PTO must provide recommendations to the president on potential copyright and AI executive actions.

The Copyright Office seeks to issue one or more reports in 2024 and will continue its “active engagement with stakeholders, other government agencies, and Congress on these issues,” a spokesperson told Bloomberg Law.

The intersection of AI and copyright law has been hotly debated as tech companies like Meta, OpenAI, and Stability AI have been sued for infringement for allegedly using protected works to train their AI models. The office received over 9,000 comments to its inquiry on AI, including a warning that potential rules could force innovators abroad.

The order is not binding on the Copyright Office, which is part of the Library of Congress and the legislative branch. It essentially tells the PTO to “sit back and wait for the Copyright Office, but when they’re done, you’ve got a solid six months to report to the president and issue a recommendation,” Kelley said.

While the executive order doesn’t place any deadlines on the Copyright Office, “the overall message from the administration is to be timely,” Wiley Rein LLC partner Duane Pozza said.

Though the PTO must meet deadlines to issue guidance and recommendations on these complex questions, it’s not “the end of the road,” Iancu said. The Patent Office adds or amends examples in its manual for examiners “all the time.”

“They need to answer these questions so that the examiners have a common approach to these things and the public knows what the examiners are doing,” he said.