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.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.