PatentNext Takeaway: The President’s recent Executive Order (EO) regarding artificial intelligence (AI) addresses, among other things, intellectual property (IP). The EO directs the U.S. Patent and Trademark Office (USPTO) and U.S. Copyright Office to provide guidance and recommendations on IP issues of patent inventorship, patent eligibility, and copyright authorship in view of Artificial Intelligence (AI). While the guidance and recommendations will not have the force of law, they are nonetheless expected to include data and insights from stakeholders that could form a basis for future legislation and/or provide persuasive information as AI-related cases find their way into U.S. courts.  

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President Biden recently released via whitehouse.gov an Executive Order (EO) on Artificial Intelligence (AI). The EO is titled “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.” 

According to the current Administration, the purpose of the EO is to govern “the development and use of AI safely and responsibly.” The EO seeks to advance a “coordinated, Federal Government-wide approach” to do so.

Part of this approach focuses on Intellectual Property (IP), including patent and copyright issues. The EO directs various actions to be taken by respective agencies, two of which are the U.S. Patent and Trademark Office (USPTO) and the U.S. Copyright Office. The whitehouse.gov website further provides a FACT SHEET that summarizes various directives to be taken by different agencies.

This article explores the IP aspects, including impacts on patents and copyrights.  

EO Impact on Patents

Section 5.2 of the EO is titled “Promoting Innovation” and includes the following subsections regarding patents. 

1. Patent Inventorship

The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) are required to publish “guidance to USPTO patent examiners and applicants addressing inventorship.” Section 5.2(c)(i)(emphasis added). The EO sets a due date for the guidance at 120 days from issuance of the EO, which would set the due date at February 27, 2024

According to the EO, the goal of the guidance is to instruct patent examiners regarding “the use of AI, including generative AI, in the inventive process, including illustrative examples in which AI systems play different roles in inventive processes and how, in each example, inventorship issues ought to be analyzed.” Id. (emphasis added).

The guidance could answer, or at least begin to answer, an important question regarding patent inventorship issues that arise when generative AI is used to develop patent claims. That is, generative artificial intelligence (AI) systems, such as ChatGPT, can output new content based on user input. If such new content forms part of a new “invention” (i.e., part of a patent claim), does the AI system need to be listed as an “inventor”? There are currently two schools of thought for answering this question. One school of thought answers, “no, the AI system is merely a tool of the human user.” The other school of thought answers “maybe,” and could lead to the possible invalidity of any patent claims where an applicant fails to list an AI as at least a joint inventor. The following PatentNext article further discusses these two schools of thought in more detail: PatentNext: Do you have to list an Artificial Intelligence (AI) system as an inventor or joint inventor on a Patent Application?

2. Patent Eligibility

In addition, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO Director are required to “issue additional guidance to USPTO patent examiners and applicants to address other considerations at the intersection of AI and IP, which could include, as the USPTO Director deems necessary, updated guidance on patent eligibility to address innovation in AI and critical and emerging technologies.” Section 5.2(c)(ii) (emphasis added). The EO sets a due date for the additional guidance at 270 days from issuance of the EO, which would set the due date at July 26, 2024

Additional guidance would presumably add or update the now 4-year-old 2019 Revised Patent Subject Matter Eligibility Guidance (the “2019 PEG”). The 2019 PEG was well received among patent applicants and, with respect to AI, included Example 39, which showed how to draft a hypothetical patent-eligible claim for a “Method for Training a Neural Network for Facial Detection”). See PatentNext: How to Patent an Artificial Intelligence (AI) Invention: Guidance from the U.S. Patent Office (USPTO).

The USPTO’s Patent Trial and Appeal Board (PTAB) also designated an AI-related case as “informative,” which further illustrated techniques for drafting patent-eligible AI claims. See ex parte Hannun (formerly Ex parte Linden), 2018-003323 (April 1, 2019) (designated by the PTAB as an “Informative” decision).

A further update from the USPTO would presumably be welcomed by practitioners and applicants, which could add or update to Example 39 and the PTAB’s “informative” case.

EO Impact on Copyrights

The U.S. Copyright Office is required to issue “recommendations to the President on potential executive actions relating to copyright and AI.” Section 5.2(c)(iii)(emphasis added). The EO provides that the “recommendations shall address any copyright and related issues discussed in the United States Copyright Office’s study, including the scope of protection for works produced using AI and the treatment of copyrighted works in AI training.” Id.

This gives the U.S. Copyright Office an opportunity to update (or possibly change) its current position with respect to AI-generated works. But this is unlikely in view of the recent development of U.S. case law that denies copyright protection to non-human authors. That is, according to a recent district court decision, an artificial intelligence (AI) cannot be an “author” as that term is defined by U.S. copyright law.  See PatentNext: How U.S. Copyright Law on Artificial Intelligence (AI) Authorship Has Gone the Way of the Monkey

In view of such case law, the U.S. Copyright Office requires authors to identify, during registration, any portion of a work that was generated using AI. See Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence, 88 Fed. Reg. 51 at 16191. Only those portions involving “contribution” by a human author are eligible for copyright protection; those portions that are generated by AI are not. See PatentNext: U.S. Copyright Office Partially Allows Registration of Work having AI-generated Images (“Zarya of the Dawn”)

Thus, the guidance from the U.S. Copyright Office is likely to reflect the developments of U.S. case law and the U.S. Copyright Office’s current practices developed in view of the case law. At this point, legislative action will likely be needed to change the course of U.S. Copyright law for AI-generated works. For example, a new law could be welcomed by artists such as Jason Allen, who entered over 600 text prompts into an AI tool (Midjourney) to generate an AI work that won first prize at the 2022 Colorado State Fair annual fine art competition. Mr. Allen’s award-winning work was denied copyright registration on the basis that there was no human contribution and, thus, no human “authorship” per U.S. copyright law. Perhaps changes to the U.S. Copyright Office could allow artists like Mr. Allen to pursue some protection that acknowledges his efforts in producing AI-based art. 

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PatentNext is moderated by Ryan N. Phelan, a registered U.S. Patent Attorney and Software and Computer Engineer. Ryan previously worked in the IT industry as a consultant at Accenture, where he regularly consulted Fortune 500 companies in software and computing technologies. Ryan is…

PatentNext is moderated by Ryan N. Phelan, a registered U.S. Patent Attorney and Software and Computer Engineer. Ryan previously worked in the IT industry as a consultant at Accenture, where he regularly consulted Fortune 500 companies in software and computing technologies. Ryan is featured in the IAM Strategy 300 & 300 Global Leaders guides, and was selected for inclusion in The Best Lawyers in America© list in the practice area of Patent Law. Ryan is also an adjunct professor at Northwestern University’s Pritzker School of Law where he teaches coursework on Patenting Software Inventions. Learn more about Ryan.