The Next Step in Intellectual Property Protection for AI Technology – A Call to Action from the AI Executive Order

On October 30, 2023, President Biden issued an Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (the “AI EO”). The AI EO provides a sweeping call to action. Specifically, as applied to Artificial Intelligence and Copyright/Patent law, Section 5.2 of the AI EO tasks the United States Patent and Trademark Office (USPTO) and Copyright Office with the following:

(c) To promote innovation and clarify related to AI and inventorship of patentable subject matter, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO Director) shall:

(i) within 120 days of the date of this order, publish guidance to USPTO patent examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process, including illustrative examples in which AI systems play different roles in inventive processes and how, in each example, inventorship issues ought to be analyzed;

(ii) subsequently, within 270 days of the date of this order, issue additional guidance to USPTO patent examiners and applicants to address other considerations at the intersection of AI and IP, which could include, as the USPTO Director deems necessary, updated guidance on patent eligibility to address innovation in AI and critical and emerging technologies; and

(iii) within 270 days of the date of this order or 180 days after the United States Copyright Office of the Library of Congress publishes its forthcoming AI study that will address copyright issues raised by AI, whichever comes later, consult with the Director of the United States Copyright Office and issue recommendations to the President on potential executive actions relating to copyright and AI. The recommendations shall address any copyright and related issues discussed in the United States Copyright Office’s study, including the scope of protection for works produced using AI and the treatment of copyrighted works in AI training.

The AI EO follows recent judicial opinions, administrative rule making and information gathering sessions, congressional hearings, and pending legislation. However, as an executive order, the AI EO is limited to commitment from the Executive Branch that provides guidance and recommendations regarding AI-related technology. Nonetheless, it provides a clear time frame by which the USPTO and Copyright Office are to provide IP-related guidance and recommendations for AI-related technology.

The AI EO does not itself establish or modify policies or rules, but signals what type of changes may be in store in the upcoming months. As we prepare for these potential changes, it is a good opportunity to summarize the current state of IP law relative to AI.

Current Status of Copyright Law and AI

The current status of Copyright protection for AI-generated content remains clear. 

• AI-created works are not registerable on their own – copyright protection in the U.S. is reserved for human authors.
• Human-created content (and only human-created content) in the prompts, supplemental content, or modifications to AI-generated content can be protected by copyright in accordance with traditional legal copyright frameworks.

Prior to the AI EO, the Copyright Office was already studying copyright issues raised by generative AI. In view of the AI EO, the Copyright Office may generate or confirm policies/rules related to copyright registration of AI-generated content.  More importantly, if there is a recommendation to expand the scope of registerable works to include AI-generated content, we expect the Copyright Office to suggest to Congress how to amend relevant statutes. 

Additionally, a key legal debate related to copyright law and AI is whether fair use applies as an affirmative defense, especially as applied to copyrighted works incorporated into AI training sets. The AI EO’s requirement to provide “recommendations (for) . . . the treatment of copyrighted works in AI training” may result in administrative policies or congressional recommendations for statutory reform. 

Current Status Patent Law and AI

Unlike copyright law, the USPTO has not issued clear, encompassing guidance as to various legal and business issues that can be associated with inventions related to AI-technology or inventions purportedly developed (at least in part) by AI. However, at least two points represent the current state of patent law and AI:

• An AI algorithm cannot be named as a solo inventor in a patent application.
• Patent applications directed to the techniques for generating training data may be considered patentable subject matter (e.g., Example 39 of the Revised Guidance Patent Subject Matter Eligibility issued in October 2019)

Similar to the Copyright Office, the USPTO has been actively considering patent issues raised by AI. In view of the AI EO, the USPTO will likely generate or confirm policies/rules related to inventorship involving AI-based technology. Similar to the Copyright Office, if there is a recommendation to expand the definition of inventorship or its application to AI-technology, we expect the USPTO will recommend to Congress how to amend relevant statutes. 

In relation to patent eligibility, the USPTO has stated its belief that current USPTO guidance is equipped to handle advances in AI. In view of the AI EO, the USPTO may release additional examples to provide further clarity for AI-related patent eligibility considerations.

Another consideration for USPTO guidance, although not specifically mentioned, is standards and best practices related to the requirements of 35 U.S.C. Section 112 (e.g., written description and enablement). In view of recent legal opinions related to Section 112, the USPTO may also provide further guidance to assist the examination of patent applications that include AI technology.

Expanded Rights of Publicity

One key IP right not directly addressed by the AI EO is the right of publicity. Many point to a need for enhanced protection related to deep fakes and automated performances “in the style” of a performer. While the AI EO references labeling synthetic content (e.g., via watermarking) and “preventing generative AI from…producing non-consensual intimate imagery of real individuals,” the AI EO does not otherwise appear to address deep fakes and performances “in the style” of a performer. However, this issue may be addressed, at least in part, in at least one bill pending before Congress, the NO FAKES Act.

Will Congressional Action Follow?

While the USPTO and Copyright Office may continue to gather information, issue guidance, and engage in some amount of rulemaking, any substantial change to the status quo of IP protection for AI-related technology will likely require congressional action. For example, any change to currently understood concepts of inventorship and authorship to recognize the contributions of AI will, at a minimum, require statutory reform. Thus, while the AI EO seeks “to promote innovation and clarify related to AI and inventorship of patentable subject matter,” Congress will likely need to pass substantive legislation to significantly change the status quo.