02/22/2023
Can Artificial Intelligence Earn a Patent?
Technology has often transformed our economy – trains transformed transportation from coast to coast; e-mail transformed communication from person to person. We are now at the cusp of understanding the transformation to be created by Artificial Intelligence (“AI”).
AI allows for the real-time use and interpretation of immense data in manners inconceivable by the human brain. To name a few applications, AI can improve productivity of manufacturing using real-time sensors, monitor environmental issues to improve crop yield, enhance medical diagnostics, create avatars that offer customer service, and provide increased public safety.
AI at its inception needs human assistance to clean and interpret the data. There exists a symbiotic relationship between human and machine which allows for better information to be created than the human or the machine could produce alone.
It is widely believed that while AI can synthesize and interpret data, it is not yet able to produce original thought and therefore is incapable on its own to create inventive subject matter. AI can drive innovation, but it cannot yet create innovation. AI has been used by humans in the creation of inventive material which raises a number of impending issues in the field of patent law:
• Can AI be named as an Inventor in a patent?
• Does the contribution made by the AI need to be disclosed in the patent application?
• How do you attribute percentage contribution made by AI in an invention?
• If AI on its own cannot be named as an Inventor or Applicant, what are the inventorship, ownership, and financial rights of the original coders, developers, information teachers, individuals maintaining the AI, machine owners, software licensees, and machine operators, etc.?
• How will AI impact Obviousness objections once AI raises the skill level of a person of ordinary skill in the art?
• How will AI impact 101 Rejections once AI is considered?
• If AI is not considered an Inventor in the United States how is AI viewed in other jurisdictions when applying for patents in other countries claiming U.S. priority?
Many of the above questions have yet to be answered in the courts. However, on August 5, 2022, the Federal Circuit Court of Appeals which hears all patent appeals has answered one of these questions in Stephen Thaler v. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, United States Patent and Trademark Office (Fed. Circuit No. 21-2347). The Federal Circuit affirmed the decision of the U.S. District Court that denied Mr. Thaler’s patent applications that named only AI as inventors. The United States Patent and Trademark Office had denied U.S. Patent Application Serial Numbers 16/524,350 and 16/524,532 filed by Stephen Thaler as incomplete because they lacked a valid inventor.
The U.S. Patent Act 35 U.S.C. § (f)-(g) defines an inventor as an individual or joint-inventors / co-inventors as individuals who invented or discovered the subject matter. While the Patent Act does not expressly define the term “individual” the U.S. Supreme Court has held that the word “individual” refers to a human being. Thus, the decision by the Federal Circuit affirmed that AI is not a valid inventor because it is not a human being.
The United States Patent and Trademark Office is working in its Artificial Intelligence and Emerging Technology Partnership to engage the community of stakeholders in industry, academia, civil society, and other government agencies to develop the patent and trademark policies and the examination procedures necessary to guide and promote advances in the fields of AI and other emerging technologies. The United States Patent and Trademark Office will be issuing a Request for Comments (RFC) regarding AI issues shortly. Once these comments have been processed, the USPTO will likely issue guidelines which may answer many of the above questions and assist applicants in filing patent applications in the field of Artificial Intelligence. In addition, the courts such as the Federal Circuit will also likely also play a role in answering many of the questions.
In the meantime if you as an individual or individuals have questions regarding patents in the field of Artificial Intelligence, questions arising from innovation that was developed with the assistance of AI, or any other intellectual property questions or issues please contact the attorneys at Collard & Roe, P.C. to guide you through the patent process.
