USPTO and Copyright Office Set to Issue New AI and Intellectual Property Guidance Under Biden Executive Order

President Biden’s recent executive order on artificial intelligence (AI) includes specific mandates for the U.S. Patent and Trademark Office (USPTO) and the U.S. Copyright Office to develop policies addressing AI’s impact on intellectual property (IP). Section 5.2 of the order emphasizes promoting innovation through strengthened public-private partnerships, aligning with the USPTO’s ongoing AI and Emerging Technologies (AI/ET) Partnership.

Under subsection 5.2(c) of the executive order, the USPTO director is tasked with publishing guidance within 120 days for patent examiners and applicants. This guidance will focus on "inventorship and the use of AI, including generative AI, in the inventive process." It will include illustrative examples demonstrating different roles AI systems may play in invention and how inventorship should be analyzed in each scenario.

Furthermore, the USPTO director has up to 270 days to issue additional guidance addressing broader considerations related to AI and intellectual property. This may encompass updated guidance on patent eligibility criteria in light of AI technologies.

In parallel, the USPTO director is required to consult with the U.S. Copyright Office director to develop recommendations for the White House concerning potential executive actions on copyright and AI. These recommendations must consider issues raised in a forthcoming study by the Copyright Office and are due within 180 days after the study’s release or 270 days after the executive order’s issuance, whichever is later.

These coordinated efforts reflect a federal commitment to clarify how AI-generated inventions and creative works intersect with existing IP frameworks. By providing detailed guidance and policy recommendations, the USPTO and Copyright Office aim to support innovation while ensuring appropriate protection and recognition of intellectual property rights in an AI-driven environment.

The USPTO’s AI/ET Partnership serves as a collaborative platform engaging stakeholders from the AI community to inform policy development. The executive order’s directives build on this foundation, signaling a proactive approach to addressing the challenges and opportunities AI presents for patent and copyright law.

Legal practitioners and innovators should monitor these forthcoming guidance documents and recommendations closely, as they will shape the standards for inventorship, patentability, and copyright protection involving AI technologies.

© Arnold & Porter Kaye Scholer LLP 2023. This summary is for informational purposes and does not constitute legal advice. Consultation with counsel is recommended for specific legal questions.