On April 30, 2024, the United States Patent and Trademark Office (USPTO) published a Request for Comments (RFC) regarding the impact of the proliferation of artificial intelligence (AI) on prior art, the assessment of the level of skill/knowledge of a person having ordinary skill in the art (PHOSITA), and determinations of patentability made in view of these evaluations.

The RFC sets out several questions for public comment, including:

  • Does the term “person” in the PHOSITA assessment presume or require that the “person” is a natural person (i.e., a human)?
  • How, if at all, does the availability of AI as a tool affect the level of skill of a PHOSITA as AI becomes more prevalent?
  • How, if at all, should the USPTO determine which AI tools are in common use and whether these tools are presumed to be known and used by a PHOSITA in a particular art?
  • Should an AI-generated disclosure be treated differently than a non-AI-generated disclosure for prior art purposes? 
  • If a party submits a printed publication or other evidence that it knows was AI-generated, should it notify the USPTO, and if so, how?  What duty, if any, should a party have to determine whether a disclosure was AI-generated?
  • At what point, if ever, could the volume of AI-generated prior art be sufficient to create an undue barrier to the patentability of inventions?
  • At what point, if ever, could the volume of AI-generated prior art be sufficient to detract from the public accessibility of prior art (i.e., if a PHOSITA exercising reasonable diligence may not be able to locate relevant disclosures)?
  • Are there any laws or practices in other countries that effectively address any of the questions provided in the RFC?

The USPTO expects that the responses received will aid it in the evaluation of whether further guidance on these matters is required, the development of any such guidance, its provision of technical advice to Congress, and inform its work in the court system.

To ensure consideration, comments on the RFC must be received by July 29, 2024.

Summary By: Steffi Tran



24 05 29

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