On April 30, 2024, the USPTO published a Request for Comments on the future impact of publications by generative AI on the issue of prior art. Previously, the USPTO has consistently come down against generative AI as an inventor, saying that "under current law, only natural persons may be named as an inventor in a patent application." See Inventorship Guidance for AI-Assisted Inventions, 89 FR 10043, Docket No. PTO-P-2023-0043. Based on this stance, however, it is unclear if a publication by a generative AI could be prior art to a patent application. Toward providing an answer to that question, the USPTO is seeking public comments on "what qualifies as prior art, the assessment of the level of skill of a [person having ordinary skill in the art (PHOSITA)], and determinations of patentability made in view of these evaluations."
The USPTO recognizes that generative AI has the potential to generate vast amounts of prior art. Many practitioners find such AI-generated publications to be of low quality, frequently being ambiguous, technically deficient, or nonsensical to the point of not actually advancing a useful art. However, both the USPTO and courts operate with a presumption that a public disclosure provides a description that enables the public to make and use the disclosure. The presumption does not currently take into account who or what made the disclosure. A flood of AI-generated publications can create a mountain of prior art that is time-consuming and costly for the USPTO to analyze, for a PHOSITA to reasonably locate, and for applicants to overcome (if it can be overcome). The USPTO is seeking input on how to address AI-generated content with various amounts of human input.
In addition, AI as a tool for an inventor has the ability to greatly expand the relative "skill" of a PHOSITA. As such, AI has the potential to affect multiple aspects of patent law including enablement and various facets of obviousness such as the reasonable expectation of success, obvious to try, the "analogous art" standard, and lack of predictability in the art. The USPTO is also seeking input on how to address the availability and use of AI as a tool for inventors. The published request, entitled "Request for Comments Regarding the Impact of the Proliferation of Artificial Intelligence on Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art, and Determinations of Patentability Made in View of the Foregoing" (89 FR 34217, Docket No. PTO-P-2023-0044), is available here. Written comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov using docket number PTO-P-2023-0044 and must be received on or before July 29, 2024.
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