Senate Judiciary Members, PTO Open to AI Patent Protection Proposal

Senate Judiciary Committee members and Patent and Trademark Office Director Andrei Iancu expressed willingness Wednesday to explore legislative proposals on patent eligibility issues for artificial intelligence. Two Supreme Court decisions -- Alice Corp. v. CLS Bank International and Mayo v. Prometheus -- created “significant confusion” for applying traditional patent protections to AI algorithms, Iancu said during an oversight hearing. PTO can issue certain guidance and better clarity surrounding AI patent application, but “it’s not easy” since the office has those two cases for context. “If there is an interest in this committee or elsewhere, we would be very happy to work with you toward a solution,” Iancu said.

Alice established that a patent claim for a computer-generated financial services program was patent-ineligible because it constituted an abstract idea. Mayo established that a process patent used to link blood test results with patient health was patent-ineligible because the process incorporated laws of nature. Various case interpretations have created skepticism for applying patent protection to AI processes, Iancu said.

Sen. Kamala Harris, D-Calif., who raised the issue, asked if Iancu has seen any “promising” legislative proposals. Legislation was discussed for amending Section 101 of patent law, which hasn't been updated since 1952, and much of the language hasn't been altered since 1793, Iancu said. No specific proposals have been floated, but industry groups pitched ideas, he said. Chairman Chuck Grassley, R-Iowa, said he would be willing to look at Section 101 issues and discuss them with stakeholders and the PTO.

“Patent protection gives an incentive for inventors to actually pursue the work that is necessary to create the solutions to problems, but incentive includes giving them ownership over it over some period of time,” Harris said. AI relies on software that performs mathematical computations to help solve problems and is being deployed by various sectors across the economy. Harris asked if Albert Einstein’s E = mc² would have been patent eligible. Iancu said it’s not likely because laws of nature and their mathematical representations aren't patentable. Whether AI algorithms are mathematical representations of nature is at the “heart of the issue,” Iancu said. “There are human-made algorithms that are the result of human ingenuity that are not .. absolutes. They depend on human choices. Those are very different from E = mc²,” he said, saying each algorithm needs to be examined individually.

Sen. Orrin Hatch, R-Utah, asked Iancu about foreign patent offices discriminating against U.S. companies to enable their own domestic industries and steal or misappropriate U.S. technology. Grassley, Harris and Sen. Chris Coons, D-Del., raised concerns about China, with Coons warning against widespread and persistent IP theft from that nation. Coons commended the Trump administration for making IP protection a key foreign policy issue. He also asked for support for his Building Innovation Growth Data for IP Act (S-2601). Iancu said his office is hopeful Congress will pass legislation on this issue “as soon as possible.” Hatch asked what the PTO is doing to push back on discriminatory foreign practices against U.S. innovators. “It is important for American companies doing business overseas to have strong and better protections for their IP, and we are very mindful of potential concerns,” Iancu said.

Iancu said his office is working at the PTO-to-PTO level internationally on overall IP approaches, as well as working with U.S. Trade Representative Robert Lighthizer on various international trade agreements to ensure that “appropriate IP protections” are included for American companies abroad. Iancu is hoping to make announcements about post grant review and inter partes review proceedings this summer. Software & Information Industry Association Senior Vice President-Public Policy Mark MacCarthy said in a statement that the group applauds Iancu’s “focus on patent quality and improving the tools available to examiners. We are encouraged by the data-driven approach that Director Iancu seems to be taking towards the Inter Partes Review proceedings.”