You have probably read about how Artificial Intelligence (“AI”) is becoming more and more integrated into daily life. Whether it’s search engine results, customer service, or copywriting, AI-engines are starting to take on the work of humans in real-world scenarios. But how will it affect industries as artificial inventors?
One highly publicized disruption caused by AI technology is in education, with AI engines such as ChatGPT generating college-level essays that have tricked professors into thinking a human wrote the essays. The technology is very powerful, and it is progressing at an incredibly fast rate – too fast according to some.
As is often the case with new technology, existing laws may need to be amended – or new laws and regulations may need to be drafted – to account for the disruption. In the field of patents, courts and the USPTO have recently held that an AI engine cannot be an inventor or co-inventor of a patentable technology. Rather, the Patent Act presumes that an inventor is a natural person.
In February 2023, the USPTO requested comment from the public on this issue and provided some background:
While the USPTO was exploring the contours of inventorship law with respect to AI generated inventions, the USPTO received applications asserting that an AI machine was the inventor. On April 22, 2020, the USPTO issued a pair of decisions denying petitions to name Device for Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as the inventor. The USPTO’s decision explained that under current U.S. patent laws, inventorship is limited to a natural person(s). The USPTO’s decision was upheld on September 2, 2021 in a decision from the United States District Court for the Eastern District of Virginia. Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021). On appeal, the Court of Appeals for the Federal Circuit (Federal Circuit) affirmed the holding that an inventor must be a natural person. Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022). Specifically, the Federal Circuit held that 35 U.S.C. 100(f) defines an inventor as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The court found that based on Supreme Court precedent, an “individual” ordinarily means a human being unless Congress provided some indication that a different meaning was intended. Id. at 1211 (citing Mohamad v. Palestinian Auth. 566 U.S. 449, 454 (2012)). Based on the finding that there is nothing in the Patent Act to indicate Congress intended a different meaning, and that the Act includes other language to support the conclusion that an “individual” in the Act refers to a natural person, the court concluded that an inventor must be a natural person. Id. The court explained, however, that it was not confronted with “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Thaler v. Vidal, 43 F.4th at 1213.
Based on the above-referenced court decisions, inventions derived with the help of AI may be patentable, but that does not mean that the AI engine is eligible as a named inventor for the invention and resulting patent. Despite this, commenters have asserted that AI is in fact performing the type of work that, if a human had done the work, would pass the test for inventorship.
As the USPTO noted:
In addition, there is a growing consensus that AI is playing a greater role in the innovation process ( i.e., AI is being used to drive innovation in other technologies). For example, at the AI/ET Partnership meetings, the USPTO heard that new AI models are being used in drug discovery, personalized medicine, and chip design. As noted above, some stakeholders have indicated that technologies using machine learning may be able to contribute at the level of a joint inventor in some inventions today. Further, Congress has taken note of the increased role that AI plays in innovation. On October 27, 2022, Senators Thom Tillis and Chris Coons called on the USPTO and the U.S. Copyright Office to jointly create a national commission on AI to consider changes to existing law to incentivize future AI-related innovations and creations.
To move the ball on this issue, this week the USPTO announced a “listening session” to obtain public input on the following questions:
1. How is AI, including machine learning, currently being used in the invention creation process? Please provide specific examples. Are any of these contributions significant enough to rise to the level of a joint inventor if they were contributed by a human?
2. How does the use of an AI system in the invention creation process differ from the use of other technical tools?
3. If an AI system contributes to an invention at the same level as a human who would be considered a joint inventor, is the invention patentable under current patent laws? For example:
a. Could 35 U.S.C. 101 and 115 be interpreted such that the Patent Act only requires the listing of the natural person(s) who invent(s), such that inventions with additional inventive contributions from an AI system can be patented as long as the AI system is not listed as an inventor?
b. Does the current jurisprudence on inventorship and joint inventorship, including the requirement of conception, support the position that only the listing of the natural person(s) who invent(s) is required, such that inventions with additional inventive contributions from an AI system can be patented as long as the AI system is not listed as an inventor?
c. Does the number of human inventors impact the answer to the questions above?
4. Do inventions in which an AI system contributed at the same level as a joint inventor raise any significant ownership issues? For example:
a. Do ownership rights vest solely in the natural person(s) who invented or do those who create, train, maintain, or own the AI system have ownership rights as well? What about those whose information was used to train the AI system?
b. Are there situations in which AI-generated contributions are not owned by any entity and therefore part of the public domain?
5. Is there a need for the USPTO to expand its current guidance on inventorship to address situations in which AI significantly contributes to an invention? How should the significance of a contribution be assessed?
6. Should the USPTO require applicants to provide an explanation of contributions AI systems made to inventions claimed in patent applications? If so, how should that be implemented, and what level of contributions should be disclosed? Should contributions to inventions made by AI systems be treated differently from contributions made by other ( i.e., non-AI) computer systems?
7. What additional steps, if any, should the USPTO take to further incentivize AI-enabled innovation ( i.e., innovation in which machine learning or other computational techniques play a significant role in the invention creation process)?
8. What additional steps, if any, should the USPTO take to mitigate harms and risks from AI-enabled innovation? In what ways could the USPTO promote the best practices outlined in the Blueprint for an AI Bill of Rights [1] and the AI Risk Management Framework [2] within the innovation ecosystem?
9. What statutory changes, if any, should be considered as to U.S. inventorship law, and what consequences do you foresee for those statutory changes? For example:
a. Should AI systems be made eligible to be listed as an inventor? Does allowing AI systems to be listed as an inventor promote and incentivize innovation?
b. Should listing an inventor remain a requirement for a U.S. patent?
10. Are there any laws or practices in other countries that effectively address inventorship for inventions with significant contributions from AI systems?
11. The USPTO plans to continue engaging with stakeholders on the intersection of AI and intellectual property. What areas of focus ( e.g., obviousness, disclosure, data protection) should the USPTO prioritize in future engagements?
The above questions cover a wide range of topics and show the many technical and theoretical issues which AI triggers. The answers to these questions may drastically alter the law and the way that companies innovate and secure patent protection for their inventions.
Patent attorneys at Beusse Sanks, PLLC have experience with artificial intelligence as part of the inventive process. Call or click here to get started on protecting your IP today.
