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Should AI-generated inventions benefit from patent protection?

In the movie “Avengers: Age of Ultron”, Tony Stark downloads his personal digital assistant JARVIS into a synthetic vibranium body. With an infusion of energy from Thor’s hammer, Vision was born, an android who helps the Avengers defeat Ultron, another sentient android created by Stark. At the end of the film, Vision files a patent on his unique energy beam, but his application is denied because he is not human.

That last part is of course not in the movie, but the underlying question – whether anything other than a person is eligible to receive a patent – is very real.

DABUS and its creations

Stephen Thaler created and developed the DABUS artificial intelligence system, which he claims invented both an improved food container and a beacon light to attract/hold attention.

Thaler filed patent applications for both with the United States Patent and Trademark Office, identifying DABUS as the inventor. The applications were rejected because they did not name a person as the inventor.

Thaler for follow-up the USPTO in the federal district court and asked the court to declare that AI could properly be listed as an inventor and to order the patent office to reinstate the claims. Judge Leonie Brinkema identified the central issue as whether an AI machine can be an “inventor” under the Patent Act. She tenuous that the answer was clearly “no” according to the plain language of the law and the legal precedents that have interpreted it.

Thaler appealed to the United States Court of Appeals for the Federal Circuit, the exclusive court of appeals to hear patent cases. The Federal Circuit has yet to issue its decision, but judges who heard arguments on the issue appeared to support Brinkema’s decision.

The plain text of the Patent Act strongly supports the conclusion that Congress intended to grant patents only to natural persons. For example, modern patent law, enacted in 1952, limits the granting of patents to “persons” (35 USC § 102), and the 2011 amendments to the America Invents Act define “inventor” as a “individual” or “individuals” (35 USC § 100(f)).

Decisions passed in the federal circuit

The Federal Circuit was held at 1993 and again in 2013 that an inventor can only be a natural person, which makes it highly unlikely that the court will rule in favor of Thaler on this go-around. The United States Supreme Court is also unlikely to take up the matter, and even if it did, given the court’s conservative makeup, there is no reason to believe the justices would interpret the law. about patents to mean something other than what it says—only natural persons are considered inventors eligible to receive a patent.

But that’s not the end of the problem. AI has been used for a long time and is increasingly contributing to society. Examples include automobiles, which use cameras and algorithms to scan and interpret their surroundings and warn the driver or control vehicle operation in response; digital assistants that recognize voices, interpret questions, search and respond with answers; hospitals, where voice recognition and natural language processing software transcribes, interprets, encodes and generates reports of a doctor’s encounter with a patient; and many more.

In 2020 a patent office report highlighted the growing importance of AI in inventions, noting that in 2018, more than 60,000 patent applications were filed in which AI was a component of the claimed invention. Indeed, hundreds of thousands of patents have been issued on such inventions.

Thaler’s predicament

Of course, in these patents, a person or group has invented a system that has some form of AI as a component. What Thaler claims is very different: DABUS, not him, invented the new food container and the light beacon.

Some might wonder why Thaler, as the creator of DABUS, did not simply name himself the inventor and receive the patents in his name. This is not allowed under patent law – patents can only be granted to the “inventor”, i.e. the person who has formed a definite and permanent idea of ​​the complete and operational invention.

Thaler does meet this definition and the patents issued in its name would then be invalid and unenforceable. This means that a company could copy the inventions and profit from them, with Thaler apparently having no recourse (this is not a mere assumption, as Thaler’s patent applications were published under the procedure of the company). European Patent Office).

This result is contrary to the goal of the US patent system, which is to promote and protect innovation for the good of the country and beyond. Companies may be less willing to devote resources to developing and improving AI systems like DABUS, knowing that inventions generated by such systems cannot be protected by patent.

Patents are often a critical factor in determining whether a company receives funding. This raises the possibility that society will be denied breakthrough inventions because funding for AI systems that could develop them is not available.

Congress needs to fix this problem

Two things are clear from Thaler’s predicament.

First, this is an issue that is going to come up more frequently as AI technology continues to improve.
And second, it’s for Congress, not the courts, to go to.

Congress could either expand the definition of “inventor” to include AI or allow AI owners to file for patent protection on AI-generated inventions on their behalf. Congress could also reject any argument that patent law should be changed to account for AI-generated inventions.

As explained above, however, this latter result would run counter to the objective of promoting and protecting innovation.

This article does not necessarily reflect the views of the Bureau of National Affairs, Inc., publisher of Bloomberg Law and Bloomberg Tax, or its owners.

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Author Information

Brian E. Ferguson is a partner of Winston & Strawn LLP with over 30 years of experience representing Fortune 100 companies. He is also a graduate in electrical engineering and regularly litigates cases involving sophisticated technologies.