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How AI Challenges Disclosure in Patent Law

Tabrez Ebrahim

According to the United States Patent & Trademark Office (USPTO), the agency in the U.S. Department of Commerce that issues patents to inventors, artificial intelligence (AI) technology is a top priority for the U.S. to ensure its leadership in innovation.

The USPTO had published reports on economic and policy considerations of AI on innovation that suggest AI is expected to have wide implications for society and is likely to present a significant technological shift, including for patent law and for businesses.

As this wide adoption grows, including by inventors in the inventive process, AI has become a major concern to the USPTO and for patent theory and policy, states California Western Professor Tabrez Ebrahim in a recently published law review article titled Artificial Intelligence Inventions & Patent Disclosure.

This new research by Professor Ebrahim was supported by the Center for the Protection of Intellectual Property (CPIP) at the Antonin Scalia Law School, George Mason University, through a 2019 Thomas Edison Innovation Fellowship.

In his new article, Professor Ebrahim claims that AI fundamentally challenges disclosure in patent law, which has not kept up with rapid advancements in AI, and he also seeks to strengthen the objectives that patent law’s disclosure functions are designed to meet.

“Within this research, I assess the role that AI plays in the inventive process,” says Professor Ebrahim. “I consider how AI can produce AI-generated output that can be claimed in a patent application, and why it should matter for patent policy and for society.”

Professor Ebrahim’s article introduces a classification of AI and argues that an enhanced AI patent disclosure requirement mitigates concerns surrounding the explainability of AI-based tools and the inherent obscurity of AI-generated output.

“The use of AI in patent applications presents capabilities that were not envisioned for the U.S. patent system,” says Professor Ebrahim. “This allows for inventions based on AI-generated output that appear as if a human invented them. Inventors may not disclose the use of AI to the USPTO, but even if they were to do so, the lack of transparency and difficulty in replication with the use of AI presents challenges to the U.S. patent system and for the USPTO.”

As a result of the use of AI-based tools in the inventive process, Professor Ebrahim explains in a post published on the CPIP website, inventions may be fictitious or imaginary and still meet the enablement and written descriptions requirements. These inventions may be considered as being imaginary, never-achieved, or unworkable to the inventor, but may appear as if they were created, tested, or made workable to reasonable onlookers or to patent examiners.

The current standard for disclosure in patent law is the same for an invention produced by the use of AI as for any invention generated by a human being without the use of AI. However, writes Professor Ebrahim, the use of AI in the inventive process should necessitate a re-evaluation of patent law’s disclosure function.

As a means for achieving enhanced disclosure, the article proposes and assesses a variety of disclosure-specific incentives and data deposits for AI. It concludes by offering normative insights for innovation policy and defines a framework for a future empirical study to verify its theoretical underpinnings.

“There are a plethora of issues that the patent system and the USPTO should consider as inventors continue to use AI,” says Professor Ebrahim. “Consideration should be given to disclosure as AI technology develops and is used even more in the inventive process.”

To read Professor Ebrahim’s Law Review article in full, click here.