The dynamic roles of lawyers at the helm of legal departments have grown in value, with average total compensation rising by $148,000 in 2023, according to the Law360® Pulse 2024 Compensation Report...
By Madison Johnson, Esq. | Manager, Large Markets The adoption of generative artificial intelligence (Gen AI) technology in law firms and in-house legal departments has also made its way prominently...
By Madison Johnson, Esq. | Manager, Large Markets Legal professionals understand the importance of staying informed about breaking developments in the business world, but it is especially critical for...
By Madison Johnson, Esq. | Manager, Large Markets As the legal landscape continues to evolve, the ability to conduct efficient and accurate research remains paramount for law students and legal professionals...
By Serena Wellen & Min Chen There’s an entirely new category of generative AI that’s rapidly emerging – with the express purpose of making your legal work easier and faster. If...
The proliferation of generative artificial intelligence (AI) technology has taken most of the oxygen out of the room in corporate offices. Virtually every major company has aggressively investigated how they can either develop Gen AI tools, implement Gen AI tools and/or protect themselves from the impact of commercially available Gen AI tools.
For in-house counsel, the challenges are especially acute. Their organizations want to leverage Gen AI technologies, but they face important challenges related to managing intellectual property (IP) risks. These include a new legal landscape that is being created daily by Gen AI involving patents, copyrights, licensing and trade secrets.
“While artificial intelligence systems have existed for decades, recent systems — such as ChatGPT, Stable Diffusion, Claude, Gemini and Grok — have brought AI applications and their implications into public view,” reported Law360. “Regulatory capture, deepfakes, algorithm bias and black box decision making are just a few of the problems posed by AI today that are bubbling to the surface. Foundationally, questions remain as to the ownership of content created using AI.”
In-house counsel will be expected to lead the charge for their organizations when it comes to navigating this rapidly evolving framework around Gen AI and IP law.
LexisNexis had the opportunity to cover some of these important issues in a recent two-part LexisNexis webinar series, “AI/IP Issues,” in which we explored emerging challenges with protecting patent portfolios and managing licensing provisions (Part 1) as well as a review of current patent litigation and a forecast of where these litigation trends may be headed (Part 2).
One of the important subjects that we addressed is the guidance issued by the U.S. Patent and Trademark Office (USPTO) earlier this year on patents for inventions developed using AI, which makes it clear that “help from the technology does not foreclose getting a patent, but sets standards that will spur litigation and create new obligations for attorneys,” according to Ryan Davis of Law360.
Some of that key guidance from the USPTO includes:
AI-assisted inventions are able to be patented, although the USPTO warns that the “inventorship analysis” should focus on human contributions since patents are intended to function to incentivize and reward human ingenuity. The guidance clearly indicates that AI can be used as a tool, just like any other tool that might be used in a new invention.
The standard that must be met is that humans must contribute to every claim in a patent and that “inventorship is improper” if a patent application includes a claim in which at least one natural person did not significantly contribute to the claimed invention. This requirement will be a central focus for in-house counsel going forward. It will be important to identify a human contribution to every element in order to mitigate the risk of a patent being rejected because a single claim was invented solely by AI.
The guidance makes it clear that everyone associated with the submission of a patent application has an obligation to conduct their own reasonable inquiries to ensure the information on the application is correct and to disclose any relevant information about how AI was used in the invention process. In-house counsel will need to collect information from their colleagues about whether and how they used AI and, where necessary, obtain detailed records that illustrate the significance of human contributions to the invention.
The USPTO provides hypothetical scenarios in which AI was used in an invention process and what each one might contribute to the ability to secure a patent. These scenarios spell out that simply making or using an invention suggested by AI does not amount to a significant human contribution, but overall the “significant contribution” test is still a fairly vague standard. This is likely to lead to real-world disputes in the patent office and the courts as we proceed.
View our LexisNexis "AI/IP Issues" webinar on-demand.
The Practical Guidance team for LexisNexis has developed a number of valuable resources to give in-house counsel information and tools to lead the charge for their organizations in managing IP risks associated with the proliferation of Gen AI technology. These resources include:
All of this information is accessible to in-house legal teams from Lexis+® General Counsel Suite, which provides a vast collection of legal resources, breaking business and legal news, and Practical Guidance content.
Click here for more information about Lexis+ GC Suite or to register for a free 7-day trial.