The Council for Innovation Promotion, a group co-chaired by former U.S. Patent Office directors, says draft USPTO guidance on artificial intelligence would inject uncertainty into the process of obtaining patent protection for inventors using AI, and urges that the document be withdrawn or substantially rewritten.
“C4IP is concerned that the Office’s artificial intelligence (AI) inventorship guidance will ultimately hurt humans, human creativity, and flourishment; the very opposite of what the Office set out to do,” the group says in comments to USPTO.
“The newly announced guidance means that inventors who use artificial intelligence to innovate and then seek patent protection will be faced with uncertainty throughout the examination process and during any validity challenges afterward, with the possibility that their ‘human’ contribution was not enough,” C4IP says.
The Patent Office in February issued a request for comments on “inventorship guidance for inventions assisted by artificial intelligence,” which explained how such inventions can qualify for patents, under a requirement in President Biden’s Oct. 30 executive order on AI. The 90-day public comment period closed on May 13.
The guidance, on the question of patentability, says, “While AI systems and other non-natural persons cannot be listed as inventors on patent applications or patents, the use of an AI system by a natural person(s) does not preclude a natural person(s) from qualifying as an inventor (or joint inventors) if the natural person(s) significantly contributed to the claimed invention, as explained in section IV of this notice.”
It says, “Patent applications and patents for AI-assisted inventions must name the natural person(s) who significantly contributed to the invention as the inventor or joint inventors (i.e., meeting the Pannu factors as explained in section IV). Additionally, applications and patents must not list any entity that is not a natural person as an inventor or joint inventor, even if an AI system may have been instrumental in the creation of the claimed invention. This position is supported by the statutes, court decisions, and numerous policy considerations.”
The C4IP submission was signed by executive director Frank Cullen, a former vice president at the U.S. Chamber of Commerce.
The group’s board of directors is co-chaired by Andrei Iancu, who was USPTO director during the Trump administration, and David Kappos, USPTO director during the Obama administration.
“C4IP is a bipartisan coalition dedicated to promoting strong and effective intellectual property rights that drive innovation, boost economic competitiveness, and improve lives everywhere,” the group says. “Founded and chaired by former directors of the U.S. Patent and Trademark Office from previous Democratic and Republican administrations, our nonprofit organization aims to be a valued partner to those considering policies impacting America’s IP system.”
The trouble with the USPTO guidance on AI, C4IP says in its comments to the patent office, is that it “starts from the premise that use of AI by an inventor or inventors is different than the use of any other tool. This premise is simply incorrect. To date, the possibility that AI can act as an inventor, absent any human involvement, remains a hypothetical, not an issue that warrants a significant overhaul of existing rules, as the Office proposes to do here -- indeed, all the examples crafted by the Office describe varying degrees of human involvement.”
“Yet,” C4IP says, “under the guidance’s reinterpretation of case law on conception and inventorship, no one will be entitled to a patent where no human made a ‘significant contribution’ to the conception of the invention. But this test was developed to answer a different question -- namely, to decide who invented something first or whether someone was improperly listed or omitted as an inventor.”
C4IP says, “It is in this context that the significance (or lack thereof) of particular contributions becomes relevant.”
According to the group, “The context of a human or humans using AI is fundamentally different. The proper analytic framework for considering use of AI should be the same as what patent law has always used to consider tools or other input used by inventors. The law here is clear, as set forth in the last line of § 103: ‘Patentability shall not be negated by the manner in which the invention was made.’”
C4IP says, “Inventors’ use of AI merits no further consideration in the patentability analysis than the use of any other tool, such as a computer, for example, under fact patterns more analogous than those considered by the Office. This is because the Office is properly considering ‘how’ the invention is made, not ‘who’ the inventors are.”
It says, “Ensuring a robust and reliable patent system in the face of ongoing technological advancement is a crucial component of the USPTO’s mission. Yet, missteps in accommodating such development can have unintended but substantial chilling effects on further progress. C4IP believes this guidance on AI and inventorship, by effectively assuming too much about AI and too little about humans, has the potential to do just that.”
“The solution,” according to C4IP, “is fortunately simple: treat AI just as patent law has treated other new tools and allow relevant case law to be developed by the courts or for Congress to act. Until then, C4IP respectfully suggests that the USPTO consider rescinding or substantially revising this guidance.”