Prior Art Problems: Counsel Mull AI-Generated Disclosures

This article explores the U.S. Patent and Trademark Office (USPTO) action on April 30, 2024 when it issued “Request for Comments 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 Made in View of the Foregoing.”  The notice states that the agency is seeking, “public comments regarding the impact of the proliferation of artificial intelligence (AI) on prior art, the knowledge of a person having ordinary skill in the art (PHOSITA), and determinations of patentability made in view of the foregoing. The increasing power and deployment of AI has the potential to provide tremendous societal and economic benefits and foster a new wave of innovation and creativity while also posing novel challenges and opportunities for intellectual property (IP) policy.”

Sterne Kessler Director, Todd Hopfinger comments, “A lot of people are raising concerns about the value of patent portfolios because of AI-generated prior art.” He remarks, “This has been a huge disruptor, so clients are grappling with some of these issues. Many clients are interested in doing more prior art searches up front.”