executive order on artificial intelligence

Guidance on AI Patents After Biden Administration Executive Order

By 2022, 190,000 AI patents have been issued worldwide. However, the United States does not lead the globe on AI patent applications.
If we’re looking at AI patents by country, there were only 9,000 AI patents issued in the U.S. between 2020-22, compared to 40,000 in China. 
That doesn’t mean America is falling behind as an innovator. U.S.-based global brands are applying for thousands of AI patents annually. Consider AI patents by company—IBM tops the list with nearly 1,600 AI patent applications last year, followed by Google and Microsoft.  Artificial intelligence (AI) is just changing the landscape faster than most of us anticipated, and our government is working to create guidelines for more technological innovation. President Biden issued an Executive Order in October last year. It’s aimed at ensuring the United States harnesses the benefits of AI while effectively managing the risks. Key points of the Biden EO include:
  • Monitoring AI safety and security by developing standards, tools, and tests to ensure AI systems are safe, secure, and trustworthy.
  • Protecting the privacy of Americans by developing privacy-preserving techniques that protect users’ identities, especially minors.
  • Advancing equity and civil rights by preventing discrimination and bias in the algorithm, particularly in areas such as justice, healthcare, and housing.
  • Supporting consumers and workers by advancing the responsible use of AI in healthcare and education while addressing AI’s impact on jobs and workplaces.
  • Promoting innovation by promoting a fair and competitive AI ecosystem and expanding opportunities for skilled individuals to invent and patent AI-assisted ideas.

What the Biden Executive Order on AI Means to Inventors

In his order, the President tasked the U.S. Patent and Trademark Office (USPTO) with providing guidelines for inventors and patent examiners regarding applying for and issuing AI patents. 
Applicants can use AI to assist in the inventing process or as part of the invention itself. But the USPTO upholds Thaler v. Vidal and maintains that only natural persons can be inventors. 
AI cannot be credited as an inventor, but the USPTO guidelines for AI-assisted inventions clarify that AI inventions are not automatically unpatentable. Inventors can pursue AI patents when and if they meet certain criteria:
  • Someone who presents an issue to AI to solve is not an inventor, but someone who constructs a unique prompt that elicits a unique solution from AI may be considered an inventor.
  • Someone who designs, trains, or improves an AI system to address a specific need or problem could be considered an inventor.
  • Someone who uses the output generated by AI to prompt a new and useful system, process, machine, or item may be considered an inventor. 
Pannu v. Iolab Corp. established that the human inventor must contribute “in some significant manner” to the AI-assisted invention. The USPTO will refer to these as Pannu factors when considering the human element of your AI patent application.

The Application Process for AI Patents Explained

A majority of the AI patent applications in the U.S. are for generative AI technology. Think of ChatGPT and DallE—AI technology that generates new content from existing content and user prompts.  However, there are many different types of AI technologies to patent, including machine learning and biometrics. AI can also be in mechanic and utility patents, as well as software patents. Working with an intellectual property attorney will help you determine the best strategy for your patent application.  Here is a breakdown of what to expect when you work with Tatonetti IP to prepare your AI patent application:
  1. Identify a patentable invention. We work together to research and correctly identify the patentable components of your AI software.
  2. Complete a prior art search. As your attorney, we will complete a thorough search to ensure you aren’t infringing on an existing patent.
  3. Prepare and file your AI application. Tatonetti IP specializes in patent application preparation and filing. We can effectively describe all of the processes and systems in your AI patent application to avoid rejections.
  4. Litigate objections or rejections. Contact us if you need an attorney to represent you at the Patent Trial and Appeal Board.

How to Prepare a Successful AI Patent Application

Simply monitoring or owning an AI system does not make someone an inventor. There must be a significant human element in the development and creation of your invention for the USPTO to approve your AI patent application. Applicants pursuing patent protection for AI-related inventions should meticulously document human contributions on a claim-by-claim basis, detailing the AI system’s design, what prompts were used, outputs, and subsequent refinement or experimentation. Work with a skilled patent attorney to develop a strategy that ensures your application quickly overcomes any rejections or objections from the USPTO board. 

Frequently Asked Questions

How does the number of AI patents by country compare?

The number of AI patents issued varies significantly. For example, between 2020-2022, there were 9,000 AI patents issued in the United States compared to 40,000 in China. Factors contributing to these differences include the level of investment in AI research and development, the regulatory environment for intellectual property protection, the presence of tech companies with a strong focus on AI innovation, and national policies supporting AI development.

What are the specific guidelines set by the USPTO for inventors seeking AI patents?

While AI itself cannot be credited as an inventor, individuals can pursue AI patents if they meet certain criteria. This includes presenting a unique problem to AI, designing or improving an AI system to address a specific need, or using AI output to prompt a new and useful invention. The USPTO upholds the principle that only natural persons can be inventors but provides guidelines for AI-assisted inventions to be considered patentable.

Are there any AI patent examples of successful applications that meet USPTO guidelines?

Examples of successful AI patent applications that highlight key elements required for approval by the USPTO can include cases where an inventor designs a unique prompt that elicits a unique solution from AI, trains or improves an AI system, or uses AI output to prompt a new and useful system, process, machine, or item, they may be considered eligible for an AI patent.

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