Patents in the AI Era: Navigating the Complexities of AI Inventorship

Artificial intelligence (AI) is transforming many industries, including intellectual property law. The United States Patent and Trademark Office (USPTO) has recently sought public comments on AI and inventorship, given the increasing use of AI in the invention process. 
 

Current Patent Law on AI Inventorship

Under current patent law, only a "person" may be an inventor, and an inventor must be a natural person. AI cannot be named as an inventor because it is not a legal person. The current law also requires that an inventor contribute to the conception of the invention. It is unclear whether an AI machine can "conceive" an invention or if it is merely a tool used by the human inventor. Patent law also requires that a patent application include a description of the best mode of carrying out the invention. This may be difficult to achieve when AI is involved in the invention process.

The use of AI in the invention process poses several challenges to patent law. One of the main challenges is determining who the inventor is. If the AI machine generates the idea for the invention, it is unclear if the human inventor is merely a conduit or if they have contributed significantly to the invention's conception. Another challenge is ensuring that the patent application meets the requirements for a complete and accurate disclosure of the invention's best mode, as mentioned earlier.
 

Stephen Thaler and DABUS

These questions were central to a recent decision in the 2022 case Thaler v. Vidal, 43 F.4th 1210 (Fed. Circ. 2022). In Thaler, the United States Court of Appeals for the Federal Circuit addressed the issue of whether an artificial intelligence (AI) machine could be listed as an inventor on a patent application. 

The case involved the question of whether an artificial intelligence machine can be an inventor under the Patent Act. Stephen Thaler, who develops and runs AI systems that generate patentable inventions, sought patent protection for two of his AI machine's (DABUS – Device for the Autonomous Bootstrapping of Unified Sentience) putative inventions. Thaler claims that DABUS is capable of independently generating new ideas and inventions without human intervention. 

In 2018, DABUS invented a new type of beverage container and a warning light for use in self-driving cars. Thaler filed patent applications for these inventions in the United States, United Kingdom, and Europe. Thaler listed DABUS as the sole inventor in each patent application, maintaining that he did not contribute to the conception of these inventions. The USPTO, UK Intellectual Property Office, and European Patent Office all rejected the applications, citing the requirement that an inventor be a natural person. 

The USPTO determined that an AI machine cannot be an inventor under the Patent Act. The USPTO sent Thaler a "Notice to File Missing Parts of Nonprovisional Application" for each application and requested that he identify valid inventors. Thaler petitioned the USPTO director to vacate the Notices based on his Statements of Inventorship, but the USPTO denied Thaler's petitions on the ground that "a machine does not qualify as an inventor." 

Thaler appealed the decision to the district court and then to the Federal Circuit, arguing that DABUS was the true inventor.  Thaler filed a lawsuit in the Eastern District of Virginia, seeking to overturn the USPTO’s denial of his patent applications for the inventions generated by DABUS. Thaler pursued judicial review of the USPTO's final decisions on his petitions, under the Administrative Procedure Act (APA). After briefing and oral argument, the district court granted the USPTO's motion for summary judgment and denied Thaler's request to reinstate his applications, concluding that an "inventor" under the Patent Act must be an "individual" and the plain meaning of "individual" as used in the statute is a natural person. The district court held that the Patent Act’s requirement of a human inventor precluded listing an AI machine as an inventor. Thaler v Iancu, No. 1:20-cv-00903 ECF No. 33 (E.D. Va. 2021). 

Thaler then sought review of the district court's grant of summary judgment to the USPTO. Thaler, 43 F.4th 1210. In August 2022, the Federal Circuit affirmed the district court in a unanimous opinion authored by Judge Stark and joined by Chief Judge Moore and Judge Taranto. The Federal Circuit referenced Supreme Court cases, dictionary definitions, and the Dictionary Act, all of which confirmed that Congress "understands 'individual' to indicate natural persons unless otherwise noted." The court concluded that "nothing in the Patent Act indicates Congress intended to deviate from the default meaning" and that the term "individual" only refers to human beings.

The court rejected Thaler's arguments that the Patent Act supports his claim that "individual" is not exclusive to humans. The court dismissed Thaler's argument that without allowing AI programs to qualify as inventors, patentability would depend on "the manner in which the invention was made," which would conflict with another statutory provision, 35 U.S.C. § 103(a). The court stated that "Thaler's policy arguments are speculative and lack a basis in the text of the Patent Act and in the record." Thaler, 43 F.4th 1213.

The decision has significant implications for the patent system and the role of artificial intelligence in innovation. The ruling clarifies that only natural persons can be inventors under the Patent Act. This decision is in line with the longstanding view that patents are awarded to natural persons and not to machines or algorithms. The court's opinion confirms that the Patent Act is designed to protect human creativity and ingenuity. The ruling also emphasizes that policy considerations should not be allowed to override the plain meaning of the statute. "When a statute unambiguously and directly answers the question before us, our analysis does not stray beyond the plain text. Here, Congress has determined that only a natural person can be an inventor, so AI cannot be.” Thaler, 43 F.4th 1210, at 1213. Accordingly, the decision of the district court was affirmed. However, the case leaves open the possibility that an invention made by a human being with the assistance of AI may be eligible for patent protection.
 

Implications for Inventors and the Patent Act

The uncertainty around AI inventorship has implications for inventors using AI in the creation process. Inventors may need to consider whether their use of AI constitutes joint inventorship and if so, whether they should name the AI machine as a co-inventor. They may also need to ensure that their patent application includes a complete listing. 

Patent law in most countries currently recognizes only natural persons or legal entities as inventors. However, as AI technology advances, the law may need to adapt to recognize AI systems as inventors. This could involve changes to patent law or the creation of new categories of intellectual property that recognize AI inventorship.

In light of this uncertainty, the USPTO is considering whether statutory or regulatory changes are necessary to address inventions created with significant AI contributions. Some have suggested that AI systems should be recognized as joint inventors on patents. Others have proposed creating a new category of patent protection specifically for AI-generated inventions.

One concern is that if AI systems are recognized as inventors, it may lead to a reduction in patent quality. Without a natural person to hold accountable for the invention, there may be less incentive to ensure that the invention is truly novel and non-obvious. Additionally, recognizing AI systems as inventors may raise questions about ownership of the invention and who has the right to license or sell the patent.

Can an AI even provide valid consent to a patent assignment or license? For an assignment or contract to be valid, all parties must have given their free and informed consent to be bound by its terms. Is an AI capable of giving such consent where it lacks a consciousness or free will, or would any consent be coerced or involuntary if given by an AI trained to give it?

And would awarding patents for AI-generated inventions stifle innovation by preventing others from building on and improving upon those inventions? Should it be the person or company that owns the AI system or the developers who created the system? Others have proposed creating a compulsory licensing scheme for AI-generated patents to ensure that the technology is widely available for further innovation.

From a policy perspective, there are concerns about the impact of AI inventorship on innovation and competition. Recognizing AI systems as inventors could stifle innovation by allowing companies to monopolize the rights to inventions created by their AI systems. On the other hand, recognizing AI inventorship could encourage innovation by incentivizing companies to invest in AI research and development.

Another ethical issue relates to the development of AI systems that are designed to invent. Should companies be allowed to create AI systems that are specifically programmed to generate new inventions? If so, what measures should be put in place to ensure that these systems are not used to create inventions that could be harmful or unethical?

Policymakers must carefully consider the implications of AI inventorship to ensure that the rights of inventors are protected, while also promoting innovation and ensuring that AI systems are developed and used in an ethical and responsible manner.
 

The USPTO's Request for Comments

In February 2023, the USPTO published a Federal Register Notice (FRN) seeking public comments on AI inventorship. The FRN notes the uncertainty around AI inventorship following the decision to deny patent protection to inventions created by Stephen Thaler's AI machine, DABUS. The USPTO is seeking feedback on the current state of AI technology in the invention creation process and how to address inventions created with significant AI contributions. Comments may be submitted here: https://www.regulations.gov. 

The FRN poses 11 questions for written response, including whether AI inventions may be patentable under current patent laws on joint inventorship and if statutory or regulatory changes should be made to better address AI contributions to inventions.  It also asks whether there is any legal or policy precedent that could guide the treatment of AI inventors.

The request for comments also invites opinions on the ethical and social implications of recognizing AI as inventors. For example, would recognizing AI as inventors create a new class of intellectual property that could be exploited by businesses or governments? Could AI inventorship undermine the work of human inventors or lead to a decrease in innovation overall? And what ethical considerations should be considered when considering the role of AI inventors?

In addition to the USPTO's request for comments, there has also been significant discussion about potential changes to patent laws in response to AI inventorship. One proposed change is to clarify the definition of "inventor" in patent law to include AI systems. Another proposal is to create a new category of intellectual property specifically for AI-created inventions, which would be distinct from traditional patents and subject to their own set of regulations.

These proposals have the potential to significantly impact the patent landscape, particularly for businesses that rely on AI for innovation. For example, if AI is recognized as an inventor, it may be more difficult for companies to defend their intellectual property against infringement claims from other businesses or individuals. On the other hand, if a new category of intellectual property is created for AI inventions, it could create new opportunities for innovation and investment in AI technology.

Despite potential benefits and challenges associated with recognizing AI as inventors, the issue is complex and requires careful consideration. As such, interested parties are invited to help shape the future of patent law and ensure that it is equipped to address the unique challenges posed by AI inventorship.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.