Patent Obviousness In The AI Era

The proliferation of artificial intelligence ("AI") presents complex challenges for intellectual property, especially within patent law. In particular, the obviousness inquiry under 35 U.S.C. § 103 may be susceptible to disruption by advances in AI technology. A key factor in determining whether a patent is obviousness or not over the prior art is the level of skill of a "person having ordinary skill in the art" ("PHOSITA"). As AI increasingly bolsters the innovation process, some stakeholders argue that this level of skill should increase, thereby rendering more inventions obvious—others disagree.

Recognizing this, the United States Patent and Trademark Office ("PTO") issued a Request for Comments ("Request") in April 2024 regarding "the impact of the proliferation of artificial intelligence on prior art, the knowledge of a person having ordinary skill in the art, and determinations of patentability." 89 Fed. Reg. 34217. The Request asked for public input on several key questions, including how AI might impact the level of skill of a PHOSITA. Id. at 34220.

I. Background

There is a longstanding body of caselaw that defines what it means for one invention to be obvious over another invention. In recent years, the PTO has also taken some initial steps to grapple with the impact of AI on this existing body of law.

35 U.S.C. § 103 prevents the patenting of an invention if the differences between the claimed invention and the prior art would have been obvious to a PHOSITA before the effective filing date of an application. This determination is a question of law based on the factual inquiries established in Graham v. John Deere. The Graham factors include: (1) determining the scope and content of the prior art; (2) ascertaining the differences between the claimed invention and the prior art; (3) resolving the level of ordinary skill in the art; and (4) evaluating any objective evidence of non-obviousness. Graham v. John Deere, 383 U.S. 1, 17 (1966). In KSR International Co. v. Teleflex Inc., the Supreme Court reaffirmed the Graham framework and emphasized the importance of a flexible approach. KSR Intern. v. Teleflex Inc., 550 U.S. 398, 419–22 (2007). Additionally, the court noted that "the inferences and creative steps a person of ordinary skill in the art would employ" are relevant to the inquiry. Id. at 401.

In analyzing the third Graham inquiry—the level of ordinary skill in the art—courts will conjure a "person having ordinary skill in the art," which is a hypothetical person with knowledge of the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of skill of a PHOSITA, courts will consider several factors, including the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the education level of active workers in the field. Id.

IIIn recent years, the PTO has taken steps to address the impact of AI on various aspects of patent law. For example, in 2022, the Office announced a partnership initiative with artificial intelligence and emerging technology stakeholders. 87 Fed. Reg. 34669. Through the "AI/ET Partnership," the PTO has held several open meetings and speaking events to explore related initiatives and policy issues. AI and Emerging Technology Partnership Engagement and Events, PTO, https://www.uspto.gov/initiatives/artificial-intelligence/ai-and-emerging-technology-partnership-engagement-and-events.

Stemming from this partnership, the PTO published a Request for Comments in 2023 regarding inventorship of AI-assisted inventions (i.e., inventions where AI was used in the design process). 88 Fed. Reg. 9492 (however, this request did not address obviousness or the level of skill of a PHOSITA). Soon after, the Office released guidance outlining how it will analyze inventorship as AI plays an increasingly greater role in the invention process. 89 Fed. Reg. 10043. Among other things, the PTO specified that AI-assisted inventions are patentable, so long as a human provided a "significant contribution" to the invention. Id. at 10047.

II. Stakeholder Opinions

In April 2024, the PTO issued an additional Request for Comments regarding the impact of AI on prior art, the knowledge of a PHOSITA, and patentability determinations. 89 Fed. Reg. 34217. Of particular note, the PTO requested public input on the following question: "How, if at all, does the availability of AI as a tool affect the level of skill of a PHOSITA as AI becomes more prevalent?" Id. at 34220.

Many high-level stakeholders took the position that AI should affect the level of skill of a PHOSITA. Some argued that a PHOSITA should be considered a person equipped with state-of-the-art AI in the relevant field, and that where AI enables more rapid innovation, the determination of the level of skill of a PHOSITA should be made, in line with current analyses of other sophisticated tools. For example, IEEE stated that relevant factors may include the extent to which AI makes innovation more rapid or technology more sophisticated in the field at issue. Comment by IEEE, Regulations.gov, https://www.regulations.gov/comment/PTO-P-2023-0044-0025. Additionally, the High Tech Inventors Alliance argued that in fields where AI enhances innovation, the proliferation of AI will generally increase the level of skill of a PHOSITA. Comment by The High Tech Inventors Alliance, Regulations.gov, https://www.regulations.gov/comment/PTO-P-2023-0044-0055. Similarly, the Council for Innovation Promotion noted that AI may assist inventors, for example, by allowing them to consider prior art from a wider range of fields, thereby increasing the level of skill of a PHOSITA. Comment by Council for Innovation Promotion, Regulations.gov, https://www.regulations.gov/comment/PTO-P-2023-0044-0055. Other stakeholders argued that AI may increase the level of skill of a PHOSITA, as the prevalence of publicly available AI-generated disclosures increases. However, some cautioned that while the use of AI tools could be a factor in assessing the level of skill of a PHOSITA, this determination should be limited to a consideration of how a PHOSITA would have used such tools prior to the effective filing date, and be based only on models that existed at that time and trained in a manner consistent with the data and practices available at that time. These comments, which argue that the use of AI should impact the level of skill of a PHOSITA, seek to embrace the evolving nature of the innovation process. However, one consequence of such an approach is that an increased level of skill would render more inventions obvious, thereby increasing the difficulty of obtaining new patents, and lowering the bar for patent challengers asserting invalidity claims.

Recognizing this, other stakeholders argued that AI should not affect the level of skill of a PHOSITA. Several stakeholders maintained that AI is no different in nature from other sophisticated innovation tools, and therefore the PTO should not carve out a special consideration for AI-assisted inventions. For example, some argued that AI tools merely improve already-existing human capabilities, much like prior non-AI tools, such as computers. Other commentors, such as the Innovation Alliance, noted that under existing law, a PHOSITA is already presumed to have access to all relevant prior art, and therefore, AI should not increase the level of skill. Comment by Innovation Alliance, Regulations.gov, https://www.regulations.gov/comment/PTO-P-2023-0044-0066. Overall, these commentors take the position that while AI may enhance the innovation process, we should not view AI differently than existing innovation tools, such as calculators and computers, which merely bolster inherent human capabilities. This approach would leave the level of skill of a PHOSITA unchanged, and likely would not have a significant impact on the obviousness analysis.

The difference of opinions and positions in these comments is important to note, as the approach chosen by the PTO may impact the value of current and future patents. For example, if the PTO chooses to consider AI-enhanced capabilities and knowledge within the definition of a PHOSITA, the level of skill in the art will naturally increase. In this case, broad claims would be more susceptible to challenges during examination and subsequent invalidity challenges after issuance. Accordingly, the value of certain patents could decrease if owners settle for more narrow claims, while the expected costs to defend these claims from invalidity challenges rises. However, if the PTO chooses to exclude the consideration of AI in the obviousness analysis, then the level of skill of a PHOSITA may remain unaffected, which may not accurately reflect the state of the art and level of knowledge of actual persons of ordinary skill in the art.

III. Conclusion

A review of the comments submitted in response to the April 2024 Request reveals a clear divide among stakeholders over whether the use of AI tools should affect the level of skill of a PHOSITA. This division stems partially from a disagreement over how much value AI can actually add to the innovation process, and what effect AI should have on the obviousness inquiry.

Future guidance from the PTO may address this issue. Importantly, the approach taken by the PTO will have a significant impact on the ability of prospective owners to obtain issued patents, and for challengers to assert invalidity challenges.

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