AI and patent law: balancing innovation and inventorship

Key Point

• A recent Federal Circuit decision, sailor vs vidalclarified that an AI cannot be listed as an “inventor” for the purpose of obtaining a patent.
• The USPTO has published two notices in the Federal Register seeking comment on the state of the law governing issues related to AI inventors.
• The complex issues surrounding AI inventors are challenging companies that are increasingly relying on AI to develop their inventions.

A new wave of business innovation has arrived as businesses capitalize on the unique efficiencies and benefits of artificial intelligence (AI). Recent news headlines about chatbots such as ChatGPT and Bard highlight the explosive growth of the field. From process improvements to increased employee productivity, a company’s AI implementation can have a significant impact on its operations and bottom line.

The increasing ability of AI to devise innovative solutions is testing the boundaries of U.S. patent law in ways that were unimaginable when the Constitution and patent law were drafted. And while AI has undoubtedly produced novel and non-obvious results, one glaring question remains: Will AI be the “inventor” of patentable inventions under U.S. patent law? Is it possible, or is this position reserved only to humans?

The United States Patent and Trademark Office (USPTO) first considered the issue in 2019 and published a Request for Comments on Artificial Intelligence Invention Patents. The notice questioned whether current patent law is adequate to address inventorship of inventions made by AI, which are normally made without human intervention.

The USPTO also asked for views on how allowing AI systems to be named as inventors would affect the patent system and innovation in the AI ​​field. While responses to the USPTO’s request reflected a wide range of views on the AI ​​patent inventor issue, many commentators argued that existing law is ill-equipped to deal with AI-generated inventions. not in place and agreed that new policies were needed to ensure that such inventions were properly recognized and protected. .

Test the system with one case

When the USPTO explored policy and legal issues surrounding AI inventors, it was presented with a suitable test case. In 2019, his AI system named DABUS (which stands for Device for the Autonomous Bootstrapping of Unified Sentience) was recognized as the inventor of two of his patent applications filed by AI system developer Stephen Thaler. I was.

The USPTO has dismissed the application as incomplete due to lack of a valid inventor. The USPTO held that patent law limits inventorship to natural persons, noting that an opinion of the United States Court of Appeals for the Federal Circuit reached a similar conclusion by denying state and corporate inventorship. I mentioned

Dr. Thaler sought reconsideration of the decision, but the district court agreed with the USPTO’s conclusion and denied inventorship to DABUS. The court found “overwhelming evidence” that Congress intended to limit the definition of “inventor” to natural persons. The court also referred to the USPTO’s findings in his 2019 Federal Register notice, with many commentators disagreeing with Dr. Thaler’s view that AI his machine should be credited as an inventor. emphasized that

In 2022, Dr. Thaler appealed. His case was the first for the Federal Circuit to explicitly address whether AI machines can be “inventors” under patent law. Dr. Thaler argued that AI copyright fosters innovation, fosters the development of inventive AI, and encourages the commercialization and disclosure of human- and AI-generated inventions.

Much of the Federal Circuit’s August 5, 2022 opinion focused on the definition of “individual” in patent law. After considering various standards of construction and referring to U.S. Supreme Court precedent, the Federal Circuit upheld the lower court’s decision, holding that DABUS cannot be an “inventor” under patent law. bottom.

The court ruled that Dr. Thaler’s policy claims were speculative. He stressed that there is “no ambiguity” on the question of whether patent law requires an inventor to be human. In short, the Federal Circuit made it clear that, in its view, an inventor cannot be an inventor.

The net effect of a court decision is not just who gets the “credit” for an invention, but whether it can be patented without a human inventor.

USPTO Rejoins Conversation

In February 2023, the USPTO published another notice regarding AI inventors in the Federal Register.Recognizing the importance of the Federal Circuit sailor The USPTO emphasized its desire to “encourage inventors and academic engagement in AI-powered innovation” for the ever-expanding applications of AI.

To address the uncertainty surrounding the inventors of AI, the Secretariat is requesting comments by May 15, 2023 on:

• The USPTO should expand its current guidance on inventorship to address situations where AI contributes significantly to invention.
• Other countries have taken effective approaches to the problem of AI inventors.

Where are we now?

AI promises a real revolution for companies operating in fields such as pharmaceuticals. For example, the AI-driven drug discovery industry has more than 135 of his companies in the United States alone. Because of the Federal Circuit’s reluctance to expand the definition of “inventor,” it remains to be seen whether the USPTO or Congress will make changes to the existing regulatory and legal framework regarding patent inventors.

Opinions from the USPTO and the Federal Circuit suggest that inventions made by humans with the help of AI are eligible for patent protection. However, there is uncertainty and much debate about how much AI assistance is too much to be patented. And under current law, inventions developed purely by AI machines are not eligible for patent protection.

Dr. Thaler Ruling We met with the Supreme Court in March 2023 to give the judge an opportunity to speak on this issue. But the dramatic shift in patent inventorship requires investigating a myriad of complex issues, including:

• If AI can become an inventor, what happens to the human-based criteria by which innovation is judged when determining patentability?
• Will AI inventors be prosecuted for all their knowledge on the internet?
• If so, wouldn’t everything become self-evident and unpatentable for AI?

The issue of inventorship in patent law for AI-created inventions remains of particular importance to companies that develop and use AI technology. The ability to patent inventions is an important means for companies to protect their intellectual property and remain competitive in the market. However, the requirement that the “inventor” be a natural person is at odds with the reality of AI-generated inventions.

As the debate about AI inventions evolves, companies should be aware of other ways to protect their AI-generated inventions, such as the use of trade secrets. A similar development of copyright law that denies protection to purely AI-developed works only adds to the complexity the owner faces in obtaining proper his IP protection for her AI work.

The potential impact of AI inventors on the future of innovation and creativity in business is immense, and will be felt by companies that rely on AI technology to drive their business operations.