On April 30, 2024, the United States Patent and Trademark Office (USPTO) issued a request for comments (RFC) seeking public input on the impact of artificial intelligence (AI) on prior art, the knowledge of a person having ordinary skill in the art (PHOSITA), and patentability determinations. This RFC builds upon the USPTO's ongoing efforts to engage with stakeholders and experts on intellectual property policy in the context of AI through its AI and Emerging Technologies Partnership (AI/ET Partnership).

The increasing power and deployment of AI has the potential to provide significant societal and economic benefits while also posing novel challenges and opportunities for intellectual property policy. The USPTO's RFC aims to gather insights from the public to help evaluate the need for further guidance and inform the Office's work in the courts and in providing technical advice to Congress.

Impact of AI on Prior Art

The RFC discusses considerations for how AI-generated disclosures may impact prior art assessments. One key question is whether AI-generated disclosures, especially those created without human input, review, or validation, should qualify as prior art and potentially preclude human-created inventions from being patented. The document also raises the issue of whether AI-generated disclosures should be afforded the same rebuttable presumption of operability and enablement as human-made disclosures.

The USPTO seeks input on various aspects of AI's impact on prior art, such as the types of AI-generated disclosures pertinent to patentability determinations, how such disclosures are made available to the public, and whether they should be treated differently than non-AI-generated disclosures. The Office also asks whether the volume of AI-generated prior art could create an undue barrier to patentability or detract from the public accessibility of prior art.

Impact of AI on the Knowledge of a PHOSITA

The RFC also explores how the availability of AI as a tool for a PHOSITA may impact the obviousness analysis and other patentability considerations. The document discusses the factors considered when determining a PHOSITA's level of skill and how AI might affect this assessment, such as the rapidity of innovations and the sophistication of the technology.

The USPTO seeks feedback on various questions related to AI's impact on the PHOSITA assessment, including whether the term "person" in PHOSITA presumes or requires a natural person, how the Office should determine which AI tools are in common use and presumed to be known by a PHOSITA, and how AI's capabilities might impact the analogous art standard and the rationales for modifying prior art in an obviousness determination.

Implications for Examination Guidance and Legislative Change

The RFC also invites comments on the potential implications of AI that could require updated examination guidance and/or legislative change. The USPTO asks what specific guidance on AI's impact on prior art and the knowledge of a PHOSITA would be helpful in connection with patentability determinations made by the Office.

Additionally, the document seeks input on other ways AI might impact patentability determinations, whether there are any effective laws or practices in other countries that could be adapted to fit within the U.S. patent law framework, and whether Title 35 of the U.S. Code should be amended to account for any of the considerations set forth in the notice.

Conclusion

The USPTO's request for comments on the impact of AI on prior art, the knowledge of a PHOSITA, and patentability determinations underscores the Office's commitment to engaging with stakeholders and adapting to the evolving landscape of intellectual property in the era of AI. The insights gathered through this RFC will help inform the USPTO's evaluation of the need for further guidance and policy changes to address the unique challenges and opportunities presented by AI in the patent system. Interested parties should submit their comments by the deadline specified in the RFC to ensure consideration by the USPTO.