The United States Patent and Trademark Office (USPTO) has recently taken significant actions that will impact the patenting of artificial intelligence (AI) [08ad94ca]. One of the key actions is the issuance of the Inventorship Guidance for AI-Assisted Inventions. This guidance clarifies that while inventions created with the assistance of AI can be patentable, AI itself cannot be listed as an inventor. This reaffirms the requirement that only natural persons can be named as inventors on a patent application [08ad94ca]. Additionally, the USPTO has issued Guidelines for Assessing Enablement in Utility Applications and Patents. These guidelines provide specific guidance on how to assess enablement, particularly in the context of AI inventions. Enablement refers to the requirement that a patent application must sufficiently describe how to make and use the claimed invention. The guidelines aim to ensure that AI inventions meet this requirement [08ad94ca]. The USPTO has also provided Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations. These resources offer guidance to patent examiners on how to evaluate means-plus-function and step-plus-function claims in AI patents. Means-plus-function claims describe an element of an invention in terms of its function, while step-plus-function claims describe a method or process in terms of its steps. The resources help ensure consistent and accurate examination of these types of claims [08ad94ca]. In addition, the USPTO has proposed changes to terminal disclaimer practice. A terminal disclaimer is a legal document filed to overcome a double patenting rejection, which occurs when two or more patents claim the same invention. The proposed changes would make all claims of a patent family vulnerable to invalidation if a terminal disclaimer is filed. This means that if a terminal disclaimer is filed for one patent in a family, all other patents in the family could be invalidated. Applicants are advised to exercise caution when filing a terminal disclaimer and consider alternative strategies for patent protection [08ad94ca]. Furthermore, the USPTO has proposed changes to the fees associated with terminal disclaimers. Terminal disclaimer fees are the fees paid to the USPTO when filing a terminal disclaimer. The proposed changes aim to adjust these fees to reflect the costs associated with processing terminal disclaimers. The new fee structure would be based on the number of claims in the patent being disclaimed. These proposed changes would impact the cost of filing a terminal disclaimer and should be taken into account by applicants [08ad94ca]. These recent actions by the USPTO demonstrate the agency's commitment to adapting patent practice to the unique challenges posed by AI inventions. The guidance and resources provided aim to ensure that AI inventions meet the requirements for patentability and are examined consistently and accurately. The proposed changes to terminal disclaimer practice and fees seek to address potential issues and provide clarity for applicants. It is important for inventors, patent practitioners, and other stakeholders to stay informed about these changes and adjust their patent strategies accordingly [08ad94ca].
The use of artificial intelligence (AI) tools in the patent application process presents both risks and opportunities. IP practitioners have been using computer tools for research and drafting patent applications for years. The United States Patent and Trademark Office (USPTO) issued guidance in April 2024 for the responsible use of AI tools in practice before the USPTO. AI tools, such as Large Language Models (LLMs), have the potential to revolutionize the work of IP practitioners by improving efficiency in document drafting and reducing the time and cost of prior art searches. However, practitioners must be cautious about the accuracy of AI-generated text and the potential disclosure of sensitive client information. AI can also be used to interact with USPTO online services, but practitioners must ensure compliance with USPTO policies and avoid granting unauthorized access to AI systems. While AI has the potential to transform the patent application process, practitioners must be mindful of the risks associated with its usage and the need for human governance in risk mitigation [0d153fd9].
In Canada, a new copyright case is raising questions about AI authorship. An application filed with the Federal Court of Canada is seeking a declaration that only humans, and not artificial intelligence (AI), can be considered authors under Canada's copyright law [abee917d]. The case challenges a registration made by an intellectual property lawyer from India who used AI to combine his own photo with Vincent van Gogh's painting. The Canadian Intellectual Property Office granted copyright registration to the resulting image, setting a precedent that the office accepts AI authorship. The case raises questions about how the Copyright Act should treat AI-generated content and whether copyright protection should apply only to human-created works [abee917d]. This case highlights the ongoing debate surrounding AI and its role in creative works, and it will be interesting to see how the Federal Court of Canada decides on the matter.