White House Executive Order on AI Punts on IP Issues | Sheppard Mullin Richter & Hampton LLP

The White House Executive Order on AI (“EO”) is comprehensive and covers a wide range of topics. We provided a summary here. It addresses many of the risks and problems that can arise with AI. One of the topics which raises many legal issues, particularly with generative AI (“genAI”), is intellectual property. Some of the IP issues include: i) whether training AI models on copyrighted content constitutes infringement; ii) whether the output of genAI that is based on copyright-protected training material constitutes infringement; iii) what level of human authorship/inventorship is required for copyright/patent protection of genAI-assisted works; iv) whether genAI tools that create art “in the style of” particular artists constitutes copyright infringement and/or violate the right of publicity; v) whether genAI tools that are trained on copyright-protected materials must maintain copyright management information; and vi) whether genAI tools, such as AI code generators, that are trained on open source software, must comply with the terms of the open source licenses.

Unfortunately, the EO does not provide answers to these questions. However, it does recognize that IP issues exist and mandates actions by various agencies to address these issues. The EO requires the USPTO Director to:

  1. 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;
  2. 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; and
  3. within 270 days of the date of this order or 180 days after the United States Copyright Office 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, including 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 EO further directs the Secretary of Homeland Security, acting through the Director of the National Intellectual Property Rights Coordination Center, and in consultation with the Attorney General to within 180 days of the date of this order, assist developers of AI in combatting AI-related IP risks and develop a training, analysis, and evaluation program to mitigate AI-related IP risks.

The EO mandates that the program shall:

  1. include appropriate personnel dedicated to collecting and analyzing reports of AI-related IP theft, investigating such incidents with implications for national security, and, where appropriate and consistent with applicable law, pursuing related enforcement actions;
  2. implement a policy of sharing information and coordinating on such work, as appropriate and consistent with applicable law, with the Federal Bureau of Investigation; United States Customs and Border Protection; other agencies; State and local agencies; and appropriate international organizations, including through work-sharing agreements;
  3. develop guidance and other appropriate resources to assist private sector actors with mitigating the risks of AI-related IP theft;
  4. share information and best practices with AI developers and law enforcement personnel to identify incidents, inform stakeholders of current legal requirements, and evaluate AI systems for IP law violations, as well as develop mitigation strategies and resources; and
  5. assist the Intellectual Property Enforcement Coordinator in updating the Intellectual Property Enforcement Coordinator Joint Strategic Plan on Intellectual Property Enforcement to address AI-related issues.

We look forward to seeing the USPTO guidance to examiners early next year. We will have to continue to wait on the other issues until later in 2024.

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