Generative artificial intelligence (AI) is here. Now, the United States Patent and Trademark (USPTO) must work swiftly to catchup with the advances in generative AI technology. As we mentioned in a prior blog post, the USPTO posted a Notice in the Federal Register on February 14, 2023 for a Request for Comments Regarding Artificial Intelligence and Inventorship. The USPTO has scheduled listening sessions USPTO AI Inventorship Listening Session – East Coast, which took place on April 25, 2023 and West Coast scheduled for May 8, 2023.
The day before the USPTO AI Inventorship Listening Session – East Coast, the U.S. Supreme Court denied certiorari related to THALER, STEPHEN V. VIDAL, KATHERINE K., ET AL. (2021-2347). The reason the Thaler case is so important is that Stephen Thaler filed a patent application (Serial No. 16/524,350) at the USPTO with an Application Data Sheet (ADS) identifying “DABUS” as a name of the single inventor. However, DABUS was a generative AI tool and not a “human.” The case was issued a Notice of Missing Parts and went abandoned for not having a “human” inventor. The matter found its way to the Federal Circuit Court. The Federal Circuit Court (case 2021-2347 decided on August 5, 2022) states:
The sole issue on appeal is whether an AI software system can be an “inventor” under the Patent Act. In resolving disputes of statutory interpretation, we “begin[] with the statutory text, and end[] there as well if the text is unambiguous.” BedRoc Ltd,v. United States, 541 U.S. 176, 183 (2004). Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.
(Fed. Cir. Case 2021-2347, pg. 5, II(A), last para.)
Since, the U.S. Supreme Court has denied certiorari, then “the Patent Act requires that inventors must be natural persons; that is, human beings,” at least for now.
What is generative AI? Many of you are becoming very comfortable with generative AI without even knowing it. Think about the next time you write an email or a letter and one or more words are suggested in advance for you to hit the Tab button so that the predicted words are entered into the text seamlessly without the need to humanly enter the keystrokes.
The most notable generative AI tool with recent media attention is ChatGPT®, which is a natural language processing tool. The ChatGPT® can write emails, papers, and more but what about a patent application. It is possible for generative AI tools to write a patent application including adding its own technical content, while not commenting on the accuracy of technical content.
As discussed in the USPTO AI Inventorship Listening Session – East Coast, the case of flooding the USPTO with patent applications from generative AI tools is either happening now or on the horizon. Once these patent applications are published, the content becomes prior art. The challenge is that, as one speaker proposed, the generative AI can produce “word salad” that is inaccurate.
There are other types of generative AI tools. According to Corey Salsberg from Novartis®, JAEGER was used in their biopharmaceutical process. The generative AI tool identified new virtual molecules. For example, the JAEGER produced a couple hundred virtual molecules directed to anti-malaria. However, that was not the end of the process. Instead, the researchers then needed to further test the new virtual molecules. As a result, researchers discovered that two out of a couple hundred virtual molecules were effective for anti-malaria.
ChatGPT® and JAEGER are examples of the available generative AI tools. However, each offers completely different outputs. As a hypothetical exercise, JEAGER can produce a couple hundred virtual molecules with anti-malaria properties while ChatGPT® could possibly write a couple hundred patent applications directed to each virtual molecule discovered by JAEGER. This process can overwhelm the USPTO examination process with essentially AI generated content. As determined by Novartis® only two of the couple hundred molecules had promise. As suggested in the Listening Session- East Coast, trolls can take advantage of generative AI tools to prepare patent applications at a low cost and overwhelm the USPTO examination process.
The USPTO is taking the capabilities of generative AI tools very seriously. The Constitution, Article 1, Section 8, Clause 8, provides Congress the power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Accordingly, everyone is waiting to see the direction Congress will act.
Businesses are better served by professionals who are committed to providing the highest quality work in all they do. Hiring a patent agent/attorney who understands the USPTO’s treatment of important concepts like those presented above is one important step in providing you with strategic IP solutions and not merely IP services.
Call or click here to get started on protecting your IP today.
Lisa Velez is a registered patent agent and former patent examiner with the United States Patent and Trademark Office. Lisa is an electrical engineer with a master’s degree in electrical engineering from George Washington University. Lisa has experience in Patent Portfolio Management and prepares and prosecutes patent applications in software, electrical and mechanical areas.
