The proliferation of artificial intelligence (AI) technologies is reshaping industries and fostering a new wave of innovation. However, AI also brings novel challenges and questions to the forefront of intellectual property policy and law. In response, the United States Patent and Trademark Office (USPTO) recently issued a request for public comments on the growing influence of AI on the patent landscape. In particular, this request addresses how AI could impact determinations of patentability, including its impact on the legal standard for obviousness in patent litigation: the person having ordinary skill in the art (PHOSITA).
As AI technologies advance, traditional patent legal frameworks face challenges in defining, identifying, and assessing AI-driven innovations. To address these issues, the USPTO is gathering insights from the innovation community and AI experts on how to adapt U.S. patent laws to accommodate AI advancements. Comments are due by July 29, 2024 and the responses received will help the USPTO develop necessary guidance and inform its work in the courts and Congress. The USPTO has previously published guidance on the use of AI-based tools in practice and inventorship guidance for AI-assisted inventions.
Determining whether a particular device or application infringes upon a patent involves a multifaceted analysis, which may be complicated further by the USPTO’s forthcoming guidance. Our team of software patent infringement experts at Quandary Peak Research are monitoring these developments closely.
Key Questions Asked
The USPTO’s request for comments raises a number of critical questions related to the following areas:
- the impact of AI on prior art
- the impact of AI on a PHOSITA
- the implications of AI that could require updated examination guidance and/or legislative change
Considerations
One major consideration that our AI/ML experts identified is the potential impact of AI-generated prior art on the enablement requirement in patent applications. The enablement requirement mandates that applicants sufficiently disclose their claimed inventions so that a person skilled in the art could reproduce and use the invention. AI has the capacity to rapidly generate a vast volume of claimed inventions, encompassing a wide array of variations. This raises the prospect of inundating the USPTO with millions or even billions of AI-generated prior art references, thereby setting a higher bar for patent applicants to demonstrate the novelty of their inventions.
If left unchecked, the proliferation of AI-generated prior art could disproportionately affect important industries such as biological and pharmaceutical ventures. Unlike the software industry—which relies less on patents, evolves quickly, and has a relatively light regulatory burden to bring new products to market— biological and pharmaceutical sectors are highly regulated as well as significantly more expensive and time-consuming. Therefore, the surge in AI-generated prior art could potentially stifle investment and innovation in pharmaceutical and medical sciences. This concern is most acute for patents covering novel medicine and compositions of matter.
AI Analysis and Evaluation by Software Experts at Quandary Peak
Our AI and machine learning experts have extensive knowledge about software that employs artificial intelligence and machine learning techniques. Contact us to speak with a ML/AI expert who understands the unique challenges of evaluating AI software and source code for litigation and due diligence matters.
