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 AIPartnership@uspto.gov.

SUPPLEMENTARY INFORMATION:

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, 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.

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, 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?