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Cloudy with a Chance of AI: Navigating the FTC’s Regulatory Forecast

Data Counsel

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Practical Impacts of the ‘Cemex’ Decision

Carl Hittinger, Jeffry Liskov Author Legal Intelligencer Article on Antitrust Considerations in Executive Order on AI

On Oct. 30<sup>th</sup>, President Biden issued an executive order (EO) on the safe, secure and trustworthy development and use of artificial intelligence (AI).<a href="#_ftn1" id="_ftnref1">[1]</a> Regarding patents, the EO requires the United States Patent and Trademark Office’s (USPTO) Director to provide guidance on AI in the context of inventorship and patentable subject matter.<a href="#_ftn2" id="_ftnref2">[2]</a> Below is a timeline of when and what the public should expect to receive from the USPTO in 2024.

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Within 120 days of the EO (i.e., late February), the Director is required to publish guidance for patent examiners and applicants regarding inventorship when AI is employed in the inventive process.<a id="_ftnref3" href="#_ftn3">[3]</a> Importantly, the guidance must provide examples of AI’s different roles in the inventorship process and how inventorship issues should be evaluated. One aspect we hope to seek clarity on is how inventorship will be determined when AI contributes to an idea versus the development or perhaps refinement of an invention. Could AI eventually be listed as a co-inventor with a human? And if so, how will ownership be attributed?&nbsp; &nbsp;

Separately, within 270 days of the EO (i.e., late July), the Director is required to provide additional guidance for patent examiners and applicants potentially addressing issues such as patent eligibility for innovations in AI and critical and emerging technologies.<a href="#_ftn4" id="_ftnref4">[4]</a> Of particular interest will be whether examination of certain types of AI-related patent applications could be treated differently than examination of other AI-related patent applications. And if so, would this involve meeting some additional criteria?

Further, the EO broadly refers to “other considerations at the intersection of AI and IP… as the USPTO Director deems necessary.”<a href="#_ftn5" id="_ftnref5">[5]</a> This clearly opens the door for the USPTO to make some broad changes. Could this result in additional burdens being placed on applicants for AI-related inventions to disclose their algorithms, models and/or training data to the USPTO? Separately, whether the USPTO will plan to periodically revisit its guidance based on continued developments in the field of AI will be of further interest to the public.

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<a href="#_ftnref1" id="_ftn1">[1]</a> <a href="https://www.whitehouse.gov/briefing-room/presidential-actions/2023/10/30/executive-order-on-the-safe-secure-and-trustworthy-development-and-use-of-artificial-intelligence/">https://www.whitehouse.gov/briefing-room/presidential-actions/2023/10/30/executive-order-on-the-safe-secure-and-trustworthy-development-and-use-of-artificial-intelligence/</a>.

White House Instructs USPTO to Provide Guidance on AI

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