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Home News How AI is – and isn’t – changing the patent landscape

How AI is – and isn’t – changing the patent landscape

It feels like artificial intelligence (AI) – or, at least, talk of AI – is everywhere these days, and the field of intellectual property (IP) is no different.

The United States Patent and Trademark Office (USPTO) recently released guidance for IP professionals wrestling with whether to list AI systems as inventors on patents. In one word: don’t.

In an accompanying blog post, Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, contextualized the office’s thinking:

“The right balance must be struck between awarding patent protection to promote human ingenuity and investment for AI-assisted inventions while not unnecessarily locking up innovation for future developments,” she wrote. “To that end, the guidance provides that patent protection may be sought for inventions in which a human provided a significant contribution to the invention.”

Sean and Sarah in business attire stand smiling in front of a lobby sign of the Duke OTC logo.
Sean Combs (left) and Sarah Knight (right) at the OTC office. Credit: Fedor Kossakovski/OTC.

Technology transfer professionals are closely watching these developments, and the Duke University Office for Translation & Commercialization (OTC) is no exception. OTC recently hosted an internal roundtable with Sarah Knight and Sean Combs from Talem IP, an external IP law firm partner, to hash out some current considerations of AI and patentability.

AI as an inventor

“To date in my practice, I have not seen anything cross my desk where the AI tool is some massive new thing that we need to treat differently than we have been treating these machine learning tools over the years,” said Knight at the meeting.

Headshot of Eric in business attire smiling in front of a gray background.
Eric Wagner, Director of Legal Affairs at OTC. Credit: OTC.

Though the roundtable occurred before the USPTO AI inventorship guidance was issued, the group in the room was already leaning that way. After all, other software programs used to accomplish tasks in research are not listed as inventors currently.

Still, the inventorship issue could change in the future when litigation around AI patents revs up, warns Eric Wagner, Director of Legal Affairs at OTC.

“For those inventors who are using AI, it would be good practice to reference the AI in your lab notebooks as a research tool, with all of the inventive concepts coming from you – the inventor,” said Wagner.

AI as an inventive tool

The more common question that comes up from Duke inventors is not about AI inventorship but if their AI tool itself can be a protectable invention.

This is a thornier issue to untangle, but continuing to think about AI as a tool can help.

Diane Busch, Patent Agent at OTC. Credit: OTC.

“Focus on the major functional blocks: the inputs, the outputs, and any unique steps or features of the algorithm,” recommends Diane Busch, Patent Agent at OTC.

One or more of these functional blocks will have to be unique to make a strong patent case – for example, simply being able to search a database faster with an off-the-shelf AI system is likely not going to be a patentable invention. 

“Is the AI just a tool being used to just generate an output or is something actually being transformed during the process?” chimed in Wagner.

“Is there any kind of check that you put on that at the end of it?” suggested Combs. “Especially when you’re talking about narrowing down drug types, for example, I think that could be something that would also help.”

Knight also shared that writing patents that detail how the technology incorporating AI provides unique improvements in functionality or how the user may interact with the technology have been successful approaches. “Where we are finding success is thinking of it as the product,” she said.

That’s great advice for any kind of technology going from research to commercialization.

OTC can answer your IP questions

Wagner, Busch, and the rest of the team at OTC is here to assist you through the IP protection process, whether it features AI or not.

From early-stage translational funds, to IP protection, to licensing and start-up creation, and much more – Duke OTC is your one-stop-shop for any Duke employee with an invention.

Don’t know if you’ve got an invention? Well, come talk to us early! We’d love to help figure it out together, and then help you along the way to getting your innovation out into the real world.

Learn more about how to disclose an invention here:

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