AI & IP: Navigating the New USPTO Guidance with Derrick Brent

Artificial Intelligence (AI) is revolutionizing industries across the board, from healthcare to finance, bringing with it new challenges for inventors, universities, and the IP community. The U.S. Patent and Trademark Office (USPTO) recently issued new guidance on subject matter eligibility for AI inventions, providing much-needed clarity on how AI-related innovations can be patented. This update is vital for those working at the intersection of technology and intellectual property, especially in tech transfer offices and research institutions.

My guest today is someone deeply involved in shaping these policies: Derrick Brent, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO). As Deputy Director of the USPTO, Derrick serves as the principal advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Kathi Vidal. In his role, Derrick works to advance intellectual property policies that foster innovation, support startups, and enhance entrepreneurship nationwide.

We discuss AI subject matter eligibility guidance and its impact on the future of AI patenting. Derrick shares that the goal of this guidance is to promote clarity and consistency for both USPTO staff and external stakeholders in analyzing AI and critical emerging technologies. The USPTO aims to streamline the patenting process for AI-related inventions through clarity and consistency to patent subject matter eligibility. We also cover where stakeholders can submit comments and feedback on these guidelines. Additionally, we explore the tools and resources available to help everyone become AI fluent to navigate this rapidly evolving landscape. 

In This Episode:

[02:39] Derrick gives us a brief overview of the key updates in the USPTO's AI subject matter eligibility guidance. 

[03:02] AI presents one of the greatest technological innovation opportunities in a generation. It's transformative and an amazing Innovation opportunity.

[03:32] Order 14110 or the Safe, Secure, and Trustworthy Development and Use of AI. Was used as a guiding principle.

[04:06] The guidance on the intersection of AI and IP, which could include patent eligibility issues related to innovation in AI and Critical Emerging Technologies was issued on July 17th of 2024. We are now in the middle of the comment period.

[04:12] There are three main parts to the guidance. The first part is to assist USPTO personnel and stakeholders in evaluating subject

matter eligibility for AI inventions. 

[04:38] The second part of it is to provide a new set of examples to assist in applying guidance. The third part is to address feedback from stakeholders and also to discuss the law and policy landscape.

[06:40] Derrick shares information about the previous guidance that led up to this new guidance.

[12:19] The comment period is going on now, so submit your feedback regulations.gov.

[13:22] They are going to stay current with developments through engagement with stakeholders and interagency conversations and collaborations.

[15:41] Derrick shares important tools like Site Experience Education Program (SEE) and the Patent Examiner Technology Training Program (PETTP). The USPTO also has an AI portal.

[17:53] How the guidance addresses distinguishing between abstract ideas and practical applications.

[18:36] There is a two prong analysis. If the first prong is met then you move to the second prong.

[22:53]  Use the tools with AI related patent applications. Be diligent and describe your invention as clearly as possible

[26:39] If you're interested in commenting, go to regulations.gov. The deadline for commenting should be in the portal.

[27:41] In spite of the type of IP, there is a consistency for the rules