November 17 , 2023
The Copyright Office is working on a report , I believe they ’ re up to like 9,000 public comments , last time I looked , on copyright and AI . … One thing that people can do is get involved in that process early in this solicitation of comments period . I ’ m sure you ’ re familiar with the executive order that recently went out , the patent office is specifically named [ and ] given a couple very short deadlines to do some things in there . … Having seen the inside of the agency ’ s workings , getting involved in that conversation early , whether it be through a request for comments or something like that is what has to be done just to get your voice heard .
When it comes to the intersection of generative AI and IP , do you see any differences between what the government is focusing on versus what companies are asking for in terms of clarity ?
I think some of that remains to be seen , especially with that second deadline [ given by the executive order ] … because that second deadline is very vague . It ’ s just , the patent office can provide additional guidance on “ other considerations at the intersection of AI and IP .” …. Given the short timeline , I ’ m not sure what they ’ re going to bite off . But I mean , there ’ s all sorts of questions about open source with AI and the open source versus closed source model . There ’ s issues of consumer protection . There ’ s all these different things . … I think the order is very good in that it sort of gives us direction and gets the apparatus of the federal government moving toward giving us some certainty on at least what the high-profile questions are right now .
Even the questions outside the regulatory sphere , patent prosecutors using AI to draft patent applications , what level of involvement is OK with that ? … Sorting through it as we go on is the greatest challenge that we face going forward .
As we await some of these answers , we ’ ve seen some AI providers like Microsoft and Google announcing that they will indemnify customers for copyright infringement lawsuits that result from using their products . Is that surprising ?
With any contract , especially an IP , indemnification is often a part of a commercial contract . And I think it does help in some ways provide some certainty for people wanting to enter into the sphere . And the companies making the models are sometimes in the best space to know what the risks are . But I think there ’ s a really interesting question on , because we don ’ t know what the infringement world looks like . How much risk are these models going to be willing to take on through these indemnification provisions ? I think it ’ s a novel attempt to try and provide some clarity in risk .
In recent years , we ’ ve heard of a reported rise in trademark and patent trolls . How significant is that trend ?
When I moved to the agency , it was 2012 . And that was right in the wake of the enactment of the America Invents Act ( AIA ) in 2011 . And it ’ s pretty common knowledge at this point that the main driver behind the enactment of the AIA was the perceived problem with patent trolls . And one of the intents of the PTAB was to try and get a handle on that issue .
Some people call them patent trolls , some call them non-practicing entities ( NPEs ) … I think that there ’ s still some existence of these NPEs out there , whose business model is to take non-practicing patents and sue the industry on them . Whether it ’ s to the degree it was in 2011 , I don ’ t think so . But , there ’ s enough of it out there that the need is still there for the PTAB as originally conceived . Striking the balance between that and what some people would consider practicing small inventors … I think that there ’ s some appetite among some members of Congress to reevaluate where that balance lies .
Do you see patent law ever adapting to address new questions posed by novel AI systems ?
I ’ m a big believer in the regulatory process . The patent office has been given a lot of authority over the years to shape the contours of patent law . And I think a lot of what we ’ re seeing from AI probably is within the agency ’ s purview to address at least at first chance . For example , we were talking about patent eligibility . Obviously , the courts are going to get involved at some point , but at least as a first mover , I think that there is an opportunity for the agency to come out with some examples of , “ this is eligible , this isn ’ t .”
Now , Congress may decide that the agency didn ’ t draw the line in the right place , in which case , sure , legislation might be necessary . But , I think that most of the issues that we see in the patent sphere are sort of new flavors of old problems . For example , we ’ ve had issues of joint inventorship in the past , we have rules on how to analyze that — can that be adapted ?
Reprinted with permission from the November 17 , 2023 edition of the LEGALTECH NEWS © 2023 ALM Global Properties , LLC . All rights reserved . Further duplication without permission is prohibited , contact 877-256-2472 or asset-and-logo-licensing @ alm . com . # LTN-11202023-52474