USPTO: The impact of the proliferation of articial intelligence on prior art

The USPTO has requested comments on the ‘Impact of the Proliferation of Artificial Intelligence on Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art, and Determinations of Patentability Made in View of the Foregoing’. Mary Till, Kelly Horn and Amanda Murphy look at possible answers to the USPTO’s questions.

The USPTO has requested consultation responses by 29 July 2024. See full details of the consultation online.

published in the September issue of the CIPA Journal. See full details of the consultation online.

Considerations for the impact of AI on prior art

The USPTO is seeking comments on several questions relating to the impact of artificial intelligence (‘AI’) on prior art. As background, the preamble of 35 U.S.C. §102 begins ‘[a] person shall be entitled to a patent unless’, and then proceeds to define the categories of prior art which could render a claimed invention unpatentable. The statute identifies two broad categories of prior art: published patent documents (defined under 35 U.S.C. §102(a)(2)) and everything else (35 U.S.C. §102(a)(1)). While intellectual property offices control what is available as prior art under §102(a)(2), other types of prior art, such as printed publications, can be ‘created’ by AI. To the extent that such disclosures are available and accessible, the agency is seeking comment on the effect of such ‘created’ disclosures as prior art applied to human-made claimed inventions.

The USPTO seeks comment on the following questions in this category:

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:
5. Should the treatment of an AI-generated disclosure as prior art depend on the extent of human contribution to the AI-generated disclosure?
6. How should the fact that an AI-generated disclosure could include incorrect information (e.g., hallucinations) affect its consideration as a prior art disclosure?
7. How does the fact that a disclosure is AI-generated impact other prior art considerations, such as operability, enablement, and public accessibility?
8. 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 person having ordinary skill in the art (‘PHOSITA’) exercising reasonable diligence may not be able to locate relevant disclosures?

The USPTO is likely to receive commentary regarding the potential negative impact generative AI could have on patent application examination. For example, MPEP 901.06, which is directed to non-patent publication prior art, states the Office’s view that ‘[a]ll printed publications may be used as references, the date to be cited being the publication date’. Traditionally, printed publications were articles in peer-reviewed journals, newspapers, and the like. For over a decade, the USPTO has been applying the Federal Circuit’s ‘hold[ing] that a prior art printed publication cited by an examiner is presumptively enabling’ unless rebutted by the patent applicant. See In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012). Commentators are likely to point out that for traditional printed publications (e.g., peer reviewed journal articles) this presumption may hold true more often than for AI-generated content. This is because AI-generated content can be based in fiction rather than reality and may not undergo any human evaluation before publication. Commentators may thus suggest that AI-generated content be treated differently by the Office than human-generated content.

Considerations for the impact of AI on the knowledge of a PHOSITA

The USPTO is also seeking comment on how the proliferation of AI can alter the definition of a PHOSITA for purposes of (1) determinations of obviousness under 35 U.S.C. §103, (2) determinations of compliance with the enablement and written description prongs of 35 U.S.C. §§112(a), and (3) claim construction before the agency, and ultimately before the courts.

The USPTO seeks comment on the following questions in this category:

1. 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?
2. 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?
3. How, if at all, does the availability to a PHOSITA of AI as a tool impact:
4. Whether something is well-known or common knowledge in the art?
5. How a PHOSITA would understand the meaning of claim terms?
6. In view of the availability to a PHOSITA of AI as a tool, how, if at all, is an obviousness determination affected, including when:
7. 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?
8. 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)?
9. 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?
10. 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.)?
11. 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)?
12. 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?

The USPTO is likely to receive commentary regarding the ability of AI tools to recognise patterns and connect information in a way that a human inventor could not. One suggestion might be that with the proliferation of AI tools, a PHOSITA would be expected to have and utilise AI tools in his or her work, which would influence a PHOSITA’s knowledge once the tools were widely available. Another suggestion might be to recognise that while such tools are available, an average PHOSITA in some fields may not make use of them, particularly since the connections AI makes can at times be non-sensical. Further, commentators may note that though AI-generated content may theoretically be available to a PHOSITA, a PHOSITA may be less likely to have reviewed such publications than ones published in, for example, journals in one’s field, and, thus, less likely to have AI-generated content as part of one’s knowledge.

The implication of AI that could require updated examination guidance and/or legislative change

The USPTO poses a final set of inquiries relating to any potential changes to examination practice and any potential legislative changes that might be necessary to address the proliferation of AI and its impact on how examiners can accurately and effectively examine applications for patent where artificial intelligence might be implicated.

1. 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?
2. 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.)?
3. 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 US patent law.
4. Should title 35 of the US 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?

The USPTO is likely to receive commentary regarding proposed changes to §102 to account for the sometimes fictional and unreviewed nature of AI-generated publications. Some commentators may propose changes to exclude AI-generated content altogether from §102, while others may propose that only certain types of AI-generated content be considered prior art (e.g., only human-reviewed AI content).

In sum, the USPTO is engaging with the public who might be in a position to provide unique insights into how AI has been impacting business, technology, and legal decisions so that a common understanding between the agency and the public exists.

Mary C. Till is Of Counsel and Kelly S. Horn is an Associate in the Washington, DC office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (‘Finnegan’) and Amanda K. Murphy, Ph.D. is a Partner in Finnegan’s London office. The opinions expressed are those of the authors and do not necessarily reflect the views of their firm, its clients, or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.