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Patent Office Expanding AI Effort to Trademarks, Copyrights

Oct. 17, 2019, 8:31 AM

A U.S. Patent and Trademark Office task force on artificial intelligence is expanding its efforts to study intellectual property questions surrounding the technology.

The agency is already seeking comment about how it should adapt its policies to handle patent applications for inventions created with AI, and whether Congress should make any changes to patent law. It plans to extend its inquiry in the coming weeks to AI-related questions involving trademarks and copyrights, Laura Peter, the PTO’s deputy director, told Bloomberg Law.

“To the extent an AI invention is created by a non-human, we are struggling with all of those issues,” Peter said. The agency is looking at how AI affects trademark policy, copyright policy and data protection, in addition to patents, and asking whether there are other issues to weigh.

Companies and investors are rapidly investing in AI and betting that commercializing those technologies will reap big rewards in a market that is expected to reach $190.61 billion by 2025, according to MarketsandMarkets Research Private Ltd. The patent office is trying to figure out questions around AI-based inventions and artistic works, including whether a human can co-invent with a machine, or if an AI-generated poem can get copyright protection.

A newly-formed PTO task force will review the comments, which may help the agency potentially create guidelines for examiners and applicants on patent applications for AI-related inventions, she said.

The office could be seeking feedback to avoid problems that arose after the internet boom of late 1990s and early 2000s, Q. Todd Dickinson, a former PTO director and senior partner at Polsinelli PC, said. Practitioners have criticized the agency for granting too many questionable software patents then, prompting litigation over broad or vague claims and, in some cases, invalidation by courts and the agency’s Patent Trial and Appeal Board.

AI is the “next big thing” in technology and will touch upon countless aspects of human life, Dickinson said. The PTO wants to “make sure we try and avoid historical concerns as seen in software,” he said.

The PTO has a team that advises the Trump administration and federal government on copyright policy, separate from the U.S. Copyright Office, which is under the Library of Congress.

‘Inclusive Process’

The PTO in August asked the public to chime in on a dozen questions covering patent examination policy, including whether AI calls for new types of intellectual property protection. Comments are due Nov. 8.

The agency has set up “a small and nimble” task force with about 15 members to analyze the public comments for patents, and later for copyrights and trademarks, and “report if any changes should be made to the IP system in the U.S.,” Peter said.

The agency also will discuss policy questions with experts or the public, Peter said, noting that the PTO has not set any deadline for the effort.

“We want it to make it an inclusive process,” Peter said. “We’ll take as long as we need.”

Among the questions, public comments may push the PTO to review whether it should have a separate unit of patent examiners for AI technology, Dickinson said.

The agency doesn’t have an AI unit now “because AI is so ubiquitous across so many different technologies, it goes to the technology group,” Peter said.

That approach works in some cases, such as when the refrigeration technologies unit reviews an application for AI in a refrigerator. But it may not work for applications for inventions on how to create AI, Dina Blikshteyn, a New York-based counsel in the IP practice group at Haynes and Boone LLP, said.

“For the complex technologies, if the patent office has a separate unit, it would be helpful,” she said.

Guidance ‘Needed’

The patent office has already taken steps to clarify what AI inventions can be patented. It announced new patent guidance earlier this year, including an example of an invention covering neural networks, a branch of AI, that would meet patent eligibility requirements under Section 101 of U.S. patent law.

“The 101 guidance that the PTO put out is very helpful for AI right now,” Blikshteyn said. “Whether it’s going to be the case several years from now when the current applications enter prosecutions, that’s still to be determined.”

Peter said the agency will consider whether it needs to issue more AI-focused guidelines.

Blikshteyn said she hopes the PTO issues more guidance to deal with situations that the framers of the U.S. Constitution could not envision when they included intellectual property protections in the document.

“The inventorship itself comes from the U.S. Constitution, but I don’t know if the Constitution foresaw, per se, that machines could be inventors, so there’s some guidance that is definitely needed,” Blikshteyn said.

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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