Luke Yordy Cited in Patently O on Impact of Generative AI on Patent Examination

Bradley attorney Luke Yordy was cited in a Patently O article on the impact of generative artificial intelligence (GenAI) on prior art and potential revisions to patent examination standards to address the rising tidal wave of AI-generated, often speculative, disclosures that could undermine the patent system’s integrity.

Since the core task of patent examination is identifying quality prior art, references must be sufficiently accessible, clear, and enabling to serve as legitimate evidence of what was previously known. Some caution against automatically extending the presumption of enablement to all AI-generated disclosures. 

In a new request for comments, the USPTO has asked the public to weigh in on these issues — particularly focusing on the impact of GenAI on prior art. Disclosures are often obscure, ambiguous and technically deficient and do nothing to promote the progress of the useful arts. Still, they seemingly qualify as prior art under 35 U.S.C. 102 and are presumed to be enabling.

Yordy argues that AI-generated disclosures may decrease the patent incentive to research and disclose (The Library of Babel for Prior Art: Using Artificial Intelligence to Mass Produce Prior Art in Patent Law, 74 Vand. L. Rev. 521 (2021)). But Yordy notes the problem identified in the new request for comments, current patent law doctrines are ill-equipped to prevent AI-generated disclosures from rendering deserving inventions unpatentable. Like others, he calls out the enablement requirement as problematic, but he also goes on to propose a “conception” requirement for prior art to “ensure that AI-generated disclosures have actually contributed to public knowledge and have undergone some evaluation before they can render an invention unpatentable.”

The full article, “Discerning Signal from Noise: Navigating the Flood of AI-Generated Prior Art,” was published by Patently O on April 30, 2024.