IP UPDATE
Exploring the Latest in Intellectual Property Law
IP UPDATE
Exploring the Latest in Intellectual Property Law
artificial intelligence/AI
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PTO Reopens Comment Period for AI Inventorship Guidance

by | Jun 13, 2024 |

The US Patent & Trademark Office (PTO) reopened and extended until June 20, 2024, the period for public comment on the guidance regarding inventorship in applications involving artificial intelligence (AI) assisted inventions. The guidance was published on February 13, 2024, at 89 FR 10043. The PTO will also treat as timely any comments received between May 13, 2024, and the notice’s June 6, 2024, publication date.

Comments on the inventorship guidance must be submitted via the Federal Rulemaking Portal.

For more information, see our previous report on the February 13 PTO notice and related examination guidance.



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Senate Policy Roadmap Steers Generative AI Toward Transparency

by | Jun 6, 2024 |

In May 2024, the Bipartisan Senate AI Working Group released a roadmap to guide artificial intelligence (AI) policy in several sectors of the US economy, including intellectual property (IP). The group, which includes Senate Majority Leader Chuck Schumer (D-NY), Mike Rounds (R-SD), Martin Heinrich (D-NM) and Todd Young (R-IN), acknowledged the competing interests of positioning the United States as a global leader in AI inventions while also protecting against copyright infringement and deepfake replicas. According to the Working Group, a careful balance can be achieved by establishing two requirements for generative AI systems: transparency and explainability.

Under the current regime, AI inventors may hesitate to reveal datasets used to train their models or to explain the software behind their programs. Their reluctance stems from a desire to avoid potential liability for copyright infringement, which may arise when programmers train AI systems with copyrighted content (although courts have yet to determine whether doing so constitutes noninfringing fair use). Such secrecy leaves artists, musicians and authors without credit for their works and inventors without open-source models for improving future AI inventions. The Working Group proposed protecting AI inventors against copyright infringement while simultaneously requiring them to disclose the material on which their generative models are trained. Such transparency would provide much-needed acknowledgment and credit to holders of copyrights on content used to train the generative AI models, according to the Working Group. Although attributing credit does not absolve an alleged infringer of liability under the current legal framework, such a disclosure (even without a legislative safe harbor) may promote a judicial finding of fair use. The Working Group also identified the potential for a compulsory licensing scheme to compensate those whose work is used to improve generative AI models.

The roadmap also recommended a mechanism for protecting against AI-generated deepfakes. Under the Lanham Act, people receive protection against the use of their name, image and likeness for false endorsement or sponsorship of goods and services. But deepfakes often avoid liability through humorous or salacious misrepresentations of individuals without reference to goods or services. The Working Group advised Congress to consider legislation that protects against deepfakes in a manner consistent with the First Amendment. Deepfake categories of particular concern included “non-consensual distribution of intimate images,” fraud and other deepfakes with decidedly “negative” outcomes for the person being mimicked.

If Congress legislates in accordance with the roadmap, the transparency and explanation requirements for generative AI could impact IP law by creating a safe harbor for copyright infringement. Similarly, an individual’s name, image, likeness and voice could emerge as a new form of protectable IP against deepfakes.

Nick DiRoberto, a summer associate in the Washington, DC, office, also contributed to this blog post.



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New Guidance Addresses Use of AI Systems, Tools in Practice Before the PTO

by | Apr 18, 2024 |

The US Patent & Trademark Office (PTO) issued new guidance on the use of artificial intelligence (AI) tools in practice before the PTO. The new guidance is designed to promote responsible use of AI tools and provide suggestions for protecting practitioners and clients from misuse or harm resulting from their use. This guidance comes on the heels of a recent memorandum to both the trademark and patent trial and appeal boards concerning the applicability of existing regulations addressing potential misuse of AI  and recent guidance addressing the use of AI in the context of inventorship.

Patent practitioners are increasingly using AI-based systems and tools to research prior art, automate the patent application review process, assist with claim charting, document reviews and gain insight into examiner behavior. The PTO’s support for AI use is reflected in patent examiners’ utilization of several different AI-enabled tools for conducting prior art searches. However, because AI tools are not perfect, patent practitioners are potentially vulnerable to misuse or misconduct. Therefore, the PTO’s new guidance discusses the legal and ethical implications of AI use in the patent system and provides guidelines for mitigating the risks presented by AI tools.

The guidance discusses the PTO’s existing rules and policies for consideration when applying AI tools, including duty of candor, signature requirement and corresponding certifications, confidentiality of information, foreign filing licenses and export regulations, electronic systems’ policies and duties owed to clients. The guidance also discusses the applicability of these rules and policies with respect to the use of AI tools in the context of document drafting, submissions, and correspondence with the PTO; filing documents with the PTO; accessing PTO IT systems; confidentiality and national security; and fraud and intentional misconduct.

AI tools have been developed for the intellectual property industry to facilitate drafting technical specifications, generating responses to PTO office actions, writing and responding to briefs, and drafting patent claims. While the use of these tools is not prohibited, nor is there any obligation to disclose their use unless specifically requested, the guidance emphasizes the need for patent practitioners to carefully review any AI outputs generated before signing off on any documents or statements made to the PTO. For example, when using AI tools, practitioners should make a reasonable inquiry to confirm that all facts presented have evidentiary support, that all citations to case law and other references are accurately presented, and that all arguments are legally warranted. Any errors or omissions generated by AI in the document must be corrected. Likewise, trademark and Board submissions generated or assisted by AI must be reviewed to ensure that all facts and statements are accurate and have evidentiary support.

While AI tools can be used to assist or automate the preparation and filing of documents with the PTO, care must be taken to ensure that no PTO rules or policies are violated and that documents are reviewed and signed by a person, not an AI tool or non-natural person. AI [...]

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PTO on AI Inventorship: Will the Real Natural Human Inventors Please Stand Up?

by | Feb 22, 2024 |

On February 13, 2024, the US Patent & Trademark Office (PTO) issued a notice with examination guidance and request for comment regarding inventorship in applications involving artificial intelligence (AI)-assisted inventions. The guidance reinforces the patentability of AI-assisted inventions and sets forth preliminary guidelines for determining inventorship with a focus on human contributions in this process.

The PTO released the guidance in response to President Biden’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (October 30, 2023). The executive order mandated that the PTO, within 120 days, present “guidance to USPTO patent examiners and applicants addressing inventorship and 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.”

As in any inventorship determination for non-AI-generated inventions, “AI-assisted inventions must name the natural person(s) who significantly contributed to the invention as the inventor or joint inventor, even if an AI system may have been instrumental in the creation of the claimed invention.” As is the case for all inventions, the threshold question for inventorship in AI-assisted inventions is who made a “significant contribution” to the conception of at least one claim of the patent. For this evaluation, the Pannu factors (Federal Circuit 1998, Pannu v. Iolab Corp.) for inventorship should be considered.

With specific reference to AI-assisted inventions, the notice provides a non-exhaustive list of principles based on the Pannu factors for AI inventorship determinations:

  • Use of AI systems is not a barrier to inventorship. Use of an AI system does not negate a natural person making a significant contribution to an AI-assisted invention. To be an inventor, a natural person must have significantly contributed to each claim in a patent application or patent.
  • Recognizing a problem or obtaining a solution may be insufficient. The mere recognition of a problem or having a general goal or plan to pursue or obtain a solution from the AI input does not rise to the level of conception. The way in which a person constructs a prompt in view of the problem for eliciting a particular solution may be important for qualifying that person as an inventor.
  • Reduction to practice alone is insufficient. Reducing an invention to practice alone does not constitute a “significant contribution,” nor does the mere recognition and appreciation of the AI system output rise to the level of inventorship, especially where the output would be apparent to those of ordinary skill. By contrast, a significant contribution may exist where a person makes a significant contribution to the output or conducts a successful experiment from the output to create an invention.
  • Developing an essential building block of an AI system may be sufficient. A person developing an essential building block of an AI system to address a specific problem, where the building block is instrumental in eliciting a solution from the output, may be a proper inventor.
  • “Intellectual domination” over [...]

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Deception Inspection: Attorney Faces Discipline for Citing Fake Law

by | Feb 8, 2024 |

The US Court of Appeals for the Second Circuit referred an attorney for potential further disciplinary measures after the attorney cited a nonexistent case created by ChatGPT. Park v. Kim, Case No. 22-2057 (2d Cir. Jan. 30, 2024) (Parker, Nathan, Merriam, JJ.) (per curiam).

Minhye Park sued David Dennis Kim for an action related to a wage dispute. During the district court proceedings, Park continually and willfully failed to respond to and comply with the district court’s discovery orders. Kim eventually moved to dismiss based on Park’s failure to comply with court orders and discovery obligations. Park opposed. After weighing the requirements of Rules 37 and 41(b), the district court concluded that dismissal was appropriate. Park appealed.

The Second Circuit affirmed the dismissal, concluding that Park’s noncompliance amounted to “sustained and willful intransigence in the face of repeated and explicit warnings from the court that the refusal to comply with court orders . . . would result in the dismissal of [the] action.”

Separately, the Second Circuit addressed the conduct of Park’s attorney during the appeal, including a citation to a nonexistent case that was generated using the artificial intelligence (AI) tool ChatGPT. After receiving Park’s reply brief, the Court ordered Park to submit a copy of one of the cited decisions. Park’s attorney responded that she was “unable to furnish a copy of the decision,” explaining that she had difficulty locating a relevant case through traditional legal research tools and therefore used ChatGPT to provide the case caption ultimately cited in the brief.

The Second Circuit found that citation to a nonexistent case suggests conduct that falls below the basic obligations of counsel, and thus referred the attorney to the Court’s Grievance Panel for further investigation and consideration of a referral to the Court’s admission committee. The Court explained that any attorney appearing before it is bound to exercise professional judgment and responsibility, which impose a duty to certify that any papers filed with the court are well grounded in fact and legally tenable. Recognizing that ChatGPT is a significant technological advancement, the Court explained that the use of such tools does not excuse an attorney from separately ensuring that submissions to the Court are accurate or legally tenable. The Court concluded that referral to the Grievance Panel was warranted because the brief presented a false statement of law and the attorney made no inquiry at all, let alone a reasonable inquiry into the validity of the arguments presented. The Court also ordered the attorney to provide a copy of the ruling to her client.

Practice Note: The Second Circuit noted that several courts around the United States have proposed or enacted rules addressing the use of AI tools before a court but explained that such rules are unnecessary to inform attorneys that court submissions should be accurate.



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Artificial Inspiration? Style Execution by AI Obviates Human Authorship

by | Dec 21, 2023 |

The US Copyright Office Review Board rejected a request to register artwork made using an artificial intelligence (AI) painting application, finding that the applicant “exerted insufficient creative control” over the application’s creation of the work. Second Request for Reconsideration for Refusal to Register SURYAST (Copyright Review Board, Dec. 11, 2023) (Wilson, Gen. Counsel; Strong, Associate Reg. of Copyrights; Gray, Asst. Gen. Counsel).

Ankit Sahni filed an application to register a claim for a two-dimensional artwork titled “SURYAST.” The work was generated by inputting a photograph Sahni had taken into an AI painting app called “RAGHAV.” Sahni describes RAGHAV as an “AI-powered tool” that uses machine learning to “generate an image with the same content as a base image, but with the style of a chosen picture.” In this case, Sahni took a photograph of a sunset and applied the style of Vincent van Gogh’s The Starry Night to generate the image at issue:

In the application, Sahni listed himself as the author of “photograph, 2-D artwork” and RAGHAV as the author of “2-D artwork.” Because the application identified an AI app as an author, the Copyright Office registration specialist assigned to the application requested additional information about Sahni’s use of RAGHAV in the creation of the work. After considering the additional information, the Copyright Office refused to register the work because it “lack[ed] the human authorship necessary to support a copyright claim.”

Sahni requested that the Copyright Office reconsider its initial refusal to register the work, arguing that “the human authorship requirement does not and cannot mean a work must be created entirely by a human author.” Sahni noted that in this case, the AI required several human inputs such as selecting and creating the base image, selecting the style image and selecting a variable value that determined the strength of the style transfer. He argued that the decisions he made in generating SURYAST were sufficient to make him the author of the work, which meant that the work was the product of human authorship and therefore eligible for copyright protection. Sahni minimized the role of RAGHAV, calling it an “assistive tool” that merely “mechanically” applies “colors, shapes and styles, as directed.”

The Board disagreed, finding that Sahni’s input to RAGHAV was insufficient to make SURYAST a product of human authorship. The Board reasoned that while Sahni did provide the original image and selected the style and a “variable value determining the amount of style transfer,” Sahni was not actually responsible for “determining how to interpolate the base and style images in accordance with the style transfer value.” Furthermore, Sahni did not control where the stylistic elements would be placed, what elements of the input image would appear in the output or what colors would be applied. The Board [...]

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Tragic Ending: Award-Winning AI Artwork Refused Copyright Registration

by | Sep 21, 2023 |

The US Copyright Office (CO) Review Board rejected a request to register artwork partially generated by artificial intelligence (AI) because the work contains more than a de minimis amount of content generated by AI and the applicant was unwilling to disclaim the AI-generated material. Second Request for Reconsideration for Refusal to Register Théâtre D’opéra Spatial (Copyright Review Board Sept. 5, 2023) (S. Wilson., Gen. Counsel; M. Strong, Associate Reg. of Copyrights; J. Rubel Asst. Gen. Counsel).

In 2022, Jason Allen filed an application to register a copyright for a work named “Théâtre D’opéra Spatial,” reproduced below.

The artwork garnered national attention in 2022 for being the first AI-generated image to win the Colorado State Fair’s annual fine art competition. The examiner assigned to the application requested information about Allen’s use of Midjourney, a text-to-picture AI service, in the creation of the work. Allen explained that he “input numerous revisions and text prompts at least 624 times to arrive at the initial version of the image.” He went on to state that after Midjourney created the initial version of the work, he used Adobe Photoshop to remove flaws and create new visual content and used Gigapixel AI to “upscale” the image, increasing its resolution and size. As a result of these disclosures, the examiner requested that the features of the work generated by Midjourney be excluded from the copyright claim. Allen declined to exclude the AI-generated portions. As a result, the CO refused to register the claim because the deposit for the work did not “fix only [Mr. Allen’s] alleged authorship” but instead included “inextricably merged, inseparable contributions” from both Allen and Midjourney. Allen asked the CO to reconsider the denial.

The CO upheld the denial of registration, finding that the work contained more than a de minimis amount of AI-generated content, which must be disclaimed in a registration application. The CO explained that when analyzing AI-generated material, it must determine when a human user can be considered the “creator” of AI-generated output. If all of a work’s “traditional elements of authorship” were produced by a machine, the work lacks human authorship and the CO will not register it. If, however, a work containing AI-generated material also contains sufficient human authorship to support a claim to copyright, then the CO will register the human’s contributions.

Applying these principles to the work, the CO analyzed the circumstances of its creation, including Allen’s use of an AI tool. Allen argued that his use of Midjourney allowed him to claim authorship of the image generated by the service because he provided “creative input” when he “entered a series of prompts, adjusted the scene, selected portions to focus on, and dictated the tone of the image.” The CO disagreed, finding that these actions do not make Allen the author of the Midjourney-created image because his sole contribution was inputting the text prompt that produced it.

The CO [...]

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Copyright Office Seeks Comments on Artificial Intelligence

by | Sep 21, 2023 |

The US Copyright Office (CO) issued a notice, seeking comments on copyright law and policy issues raised by artificial intelligence (AI) systems. Artificial Intelligence and Copyright, 88 Fed. Reg. 59942 (Aug. 30, 2023).

The purpose of the notice is to collect factual information and views relevant to the copyright law and policy issues raised by recent advances in generative AI. The CO intends to use this information to advise Congress by providing analyses on the current state of the law, identifying unresolved issues and evaluating potential areas for congressional action. The CO will also use this information to inform its regulatory work and to offer resources to the public, courts and other government entities considering these issues. The questions presented in the notice are grouped into the following categories:

  • General high-level questions
  • AI training, including questions of transparency and accountability
  • Generative AI outputs, including questions of copyrightability, infringement and labeling or identification of such outputs
  • Other issues related to copyrights.

The specific questions can be found in the notice. Given the importance of using shared language when discussing AI, a glossary of terms is also provided, on which commentators can provide feedback. The CO indicated that it does not expect every party choosing to respond to the notice to address every question raised. Instead, the questions are designed to gather views from a broad range of stakeholders.

Written comments are due no later than 11:59 pm (EDT) on October 18, 2023. Written reply comments are due no later than 11:59 pm (EST) on November 15, 2023.



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Almost Paradise? No Authorship for AI “Creativity Machine”

by | Aug 31, 2023 |

The US District Court for the District of Columbia agreed with the US Copyright Office’s denial of a copyright application that sought to register visual art generated by artificial intelligence (AI) because US copyright law only protects works of human creation. Thaler v. Perlmutter, Case No. CV 22-1564 (D.D.C. Aug. 18, 2023) (Howell, J.)

The Copyright Act of 1976 provides immediate copyright protection to any work of authorship fixed in any tangible medium of expression. Applicants may submit their works to the Copyright Office for registration, during which works are reviewed for eligibility for copyright protection. the Copyright Office then registers eligible works, affording the registration owner certain legal benefits and presumptions.

Stephen Thaler, the owner of an AI computer system called the “Creativity Machine,” claimed that his AI independently generated the below visual art entitled “A Recent Entrance to Paradise.”

Thaler sought to register the work with the Copyright Office. The copyright application described the art as “autonomously created by a computer algorithm running on a machine,” identified the Creativity Machine as the author and listed Thaler as the copyright claimant under the work-for-hire doctrine. The Copyright Office denied Thaler’s application because the work lacked human authorship, which is an essential element of a valid US copyright. Thaler twice requested reconsideration of the copyright application, and the Copyright Office twice refused to register the work because of the human authorship requirement. Thaler timely appealed the Copyright Office’s denial to the District Court for the District of Columbia, and both parties moved for summary judgment.

Under the authority of the Administrative Procedure Act, the district court reviewed the Copyright Office’s final agency action through the arbitrary and capricious standard of review (5 U.S.C. § 704). The district court first analyzed whether the AI computer system could own the copyright, then determined whether Thaler was a proper claimant under the work-for-hire doctrine. The district court held that the Copyright Office did not err in denying Thaler’s copyright registration application because US copyright law only protects works of human—not machine—creation. Although copyright law was designed to adapt with the times, the district court stated that there is an underlying and consistent understanding that human creativity is the driving force of copyrightability. While the tools humans use to create copyrightable works (fixed in tangible mediums) are ever evolving and range from pencils to computers, human authorship is a bedrock requirement to copyrightability such that the tools themselves cannot be listed as copyright authors. The district court further held that the plain text of the 1976 Copyright Act requires human authorship since it states that the originator of the copyrightable work must have the capacity for intellectual, creative or artistic labor—a standard that AI has yet to meet. Because AI computers cannot be copyright authors, the district court did not address the work-for-hire [...]

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PTO to Host Listening Session on Role of AI in Innovation

by | Apr 13, 2023 |

As previously reported, the US Patent & Trademark Office (PTO) published a Request for Comments Regarding Artificial Intelligence and Inventorship, seeking input from stakeholders on inventorship issues that may arise as artificial intelligence (AI) and emerging technologies play a greater role in the innovation process. In the wake of the request, the PTO published a Notice announcing that it is hosting a listening session to address the “current state of AI technologies and inventorship issues,” including whether AI should qualify as an inventor and whether the PTO should expand its current guidance.

The listening session will be held at the PTO’s headquarters in Alexandria, Virginia, on April 25, 2023, from 10:30 am to 2:45 pm EDT. Anyone seeking to speak at the listening session must register by 5:00 pm EDT on April 20, 2023. Anyone seeking to attend, either virtually or in person, but not speak at the event must register by April 24, 2023.

Registration information is available here.



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