Davis Polk partner David Lisson discussed what to expect from the U.S. Patent and Trademark Office’s (USPTO) guidance on artificial intelligence’s implications for patent law with Law360.

The executive order asks the USPTO to produce examples of AI’s different roles and explain how inventorship issues should be analyzed in each one. These aspects of the office’s guidance will be important for understanding “what can be patented, and where they’re going to draw the line,” said David. “The question is, where and how can AI be used in the inventive process without rendering the final product completely unpatentable?” he said.

David also noted that while the office’s guidance on patent eligibility may be limited to such “clear cases,” it could go further and address questions like when the use of AI improves on an existing process in such a way that it becomes a patent-eligible invention.

“I tend to think they won’t get into those details and rather take it on case by case,” he said. “But that’s something to look for.”

What Attys Expect From USPTO Guidance On AI And Patents,” Law360 (November 7, 2023) (subscription required)