Now is the time to start documenting AI’s role in invention

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Stephen L. Thaler Ph.D., a physicist and chemist, sparks a debate about the role artificial intelligence (AI) should play in patent systems worldwide.

Thaler works with artificial neural networks (ANN), computer systems that simulate the human brain, and claims that an ANN called Device for the Autonomous Bootstrapping of Unified Sentience (DABUS) is able to invent by using simple Ideas independently conceptualized and transformed into complex concepts. He filed two patent applications with the US Patent and Trademark Office (USPTO) in 2019 that listed DABUS as the sole inventor, but the USPTO deemed the applications incomplete because a machine did not qualify as an inventor, which must be a natural person.

Efforts in the UK, Australia, Germany and before the European Patent Office (EPO) met similar rejection.

However, Thaler’s initiatives are far from over.

With appeals pending, including multiple court decisions upholding the denials, Thaler has additional patent applications pending around the world, and we expect more cases related to his work to surface soon.

One such decision is an August 5 decision by the U.S. Court of Appeals for the Federal Circuit that an AI software system cannot be named as an inventor in a patent application because the plaintext of patent law, Title 35 of the U.S. Code, requires it Inventors as natural persons.

The Federal Circuit stated that 35 USC § 101 – which states that “[w]Whoever invents or discovers a new and useful process, machine, manufacture, or composition of matter, or useful improvement thereof, may be granted a patent for it, subject to the terms and requirements of this title” – must meet the “Terms and Requirements”. of 35 USC § 100(f), which expressly provides so are inventors “Individuals”.

Although the patent statute does not define the term “individual,” the court held that the plain language of the patent statute clearly requires, according to everyday parlance, common understanding and understanding of Congress, and the precedents of the Federal Court and the Supreme Court, that it be an individual must deal with natural persons, ie with people.

Although 35 USC §271 recognizes that nonhuman entities such as corporations can infringe patents, it says nothing about whether nonhuman persons can also be inventors. And while 35 USC § 103 states that patentability must not depend on “the manner in which the invention is made,” as with an ANN such as DABUS, Section 103 refers “to how an invention is made and does not such a specific provision trump addresses who may be an inventor.”

Cases in the UK and Australia reached similar results, and while the only question before the Federal Court was the AI ​​invention, those other jurisdictions and the EPO concluded that Thaler did not derive any right to grant the patents based on his DABUS ownership for the could following reasons. In general, the owner of something, such as a tree, owns the fruit of that thing, but there is no equivalent rule in connection with patents. Instead, patent grants concern the transfer of a right originally vested in an inventor who is able to own and transfer property. A machine cannot own property, and to allow a machine’s owner to substitute for the machine would require both that a machine can be an inventor and that the machine could otherwise exercise patent rights, which it cannot.

Currently, South Africa is the only jurisdiction that issues a patent that lists DABUS as the inventor and recognizes that the invention was autonomously generated by AI. While no other national law yet recognizes a “thing” – particularly an AI system – as an inventor, the importance and urgency of this debate is increasing in many countries. But as the debate has begun and is currently taking place in court, it seems inevitable that in the years to come, laws will be enacted in the US and elsewhere that will redefine inventiveness to include AI to some degree and clarify by whom a patent should be granted in these situations and whether the standard of inventive step should continue to be assessed by a ‘person of ordinary skill’.

Whether adding AI to the inventor list is good for companies or the patent system remains to be seen. However, as jurisdictions wrestle with these issues, in-house counsel must consider whether to begin documenting AI’s role in contributing to patentable inventions and how to disclose that role in future patent filings if (and when) AI invention becomes more widespread recognition and acceptance.

This article was originally published in Legal Dive on November 1, 2022.

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