Does USPTO Have A Real AI Strategy?
USPTO has put out an AI strategy document, but is it enough?
One of outgoing USPTO Director Kathi Vidal’s last moves was releasing a USPTO AI Strategy. The AI Strategy has five focus areas, covering topics like studying the impact of AI on IP and developing internal AI capabilities. What exactly is USPTO planning to build? How will it execute these initiatives? And, most importantly, does it have the technical expertise to pull it off? And is this strategy even specific enough for us to understand what USPTO’s priorities even are? Let’s take a closer look at the good, the bad, and the missing from this last-minute AI playbook.
Hope is not a Strategy (and No Details is Just Hope)
What is most important is what is missing: a clear, fleshed-out technology strategy. USPTO has had a lot of egg on its face in recent years when it comes to technology, from data leakage to DOCX issues to the debacle that is the Patent Center. So USPTO’s Focus Area 2, which is to “build best-in-class AI capabilities,” unsurprisingly raises some eyebrows. Is USPTO capable of building such priorities (and why isn’t it Focus Area 1)? The first set of sub-priorities all relate to computational infrastructure, but there are no specifics about what type of infrastructure is needed. If they are buying Nvidia GPUs, they will need to increase fees to pay for it!
But perhaps most concerningly, despite having had over a year to create this strategy, there is no “what” and no “how” in even a basic sense. USPTO promises to “identify” areas of opportunity, but shouldn’t it have found some of those areas already? Some obvious ones would include AI-assisted prior art search for examiners, AI-assisted form filling, and AI-assisted prosecution to bring down its worsening pendency timelines. Perhaps USPTO could have given some clarity as to its preferred approach—will it try to fine-tune its own LLM, or perhaps create a startup program to bring in the best and brightest? All of this is an exercise left to the reader, and it leaves that reader with an unfortunate lack of confidence that USPTO has the capability to pursue this part of the strategy. This particular area needs more fleshing out, particularly since Focus Area 4 emphasizes building up AI training and expertise within USPTO without clarifying what type of training or expertise—does USPTO want to train examiners well, or does it want to hire its own AI developers?
As a general matter, the strategy is very light on details. USPTO’s Focus Area 1 focuses on studying and publishing on the interplay between AI and IP policy, including issues like changes in filing volume, subject matter eligibility, and more. USPTO has already been publishing on this topic, including AI invention examples and guidance on inventorship; it also has a robust econometrics-driven research division. USPTO already engages with policymakers to promulgate its preferred policies and already has several outreach programs to help increase inventorship. Similarly, Focus Area 5 says that USPTO will engage with stakeholders, but it already consults with other agencies and global IP offices on matters like AI. Therefore, it is not clear what is changing as a result of this document.
One of the only details in this strategy is that USPTO, under Focus Area 3, is its interest in promoting “responsible” AI use in the community. Here USPTO emphasizes privacy, upholding civil liberties, and avoiding discrimination. While these are all important values, it is not clear how they are impacted by AI in the IP community specifically; much of this language seems to be simply lifted from President Joe Biden’s executive orders on racial equity. Unfortunately, USPTO specifically endorses an AI standard called NIST AI RMF. This is unfortunate, partially because it is too early to endorse any particular AI standard in this fast-moving space and partially because the NIST standard is vague and not gaining much traction.
But is this AI strategy already dead? Several of the strategy items are built on Executive Order 14110, which is better known as President Biden’s AI executive order, as well as Executive Order 14091. In addition to directing federal agencies to appoint a “Chief AI Officer” and expressing an interest in promoting competition, this executive order emphasized the importance of preventing discrimination through AI systems certain reporting requirements. Those executive orders were rescinded by President Donald Trump within hours of his assuming office. Presumably, this strategy will need to be changed as a result. USPTO should take this opportunity to put out a more ambitious, and specific, plan focused on technical and training milestones with key performance targets.
As a final note, USPTO’s document bills itself as a strategy document more than a policy or position document. This is largely accurate, though it will need to pick up the pace on policy to match its goals under Focus Areas 1 and 5. The US Copyright Office has been studying the topic of AI and has been putting out position papers. The most recent paper, on AI and copyrightability, was put out on January 29, just two weeks after USPTO’s strategy document came out. And other countries aren’t standing still. Japan, already a leader in AI policy, is exploring the use of AI in streamlining its prosecution process.
Weekly Novelties
DABUS, which has pursued the cause of AI inventorship, has lost another case, this time in Japan, where its Intellectual Property High Court (similar to the Federal Circuit) upheld a Tokyo district court decision holding that AI cannot be an inventor on a patent (Mainichi)
USPTO continues to be in disarray over the new Return to Office orders; so far, PTAB judges are required to come back to work, and supervisors may have to as well, though so far examiners are protected under their collective bargaining agreement (MLex)
A recent analysis found that the Netherlands has grown rapidly in oncology patents and is now the #3 patent filer in the space in the European Union (NL Times)
Last week in Steuben Foods v. Shibuya Hoppman Corporation, the Federal Circuit inched closer to abolishing the reverse doctrine of equivalents; although they found a compelling argument that the 1952 Patent Act eliminated the concept, they did not need to address the issue in this case, so RDOE lives to fight (but not be used, ever) another day (JD Supra)
Two patents by 10x Genomics were invalidated at the PTAB in the latest salvo of a legal battle against Parse Biosciences (Bloomberg)