PATENT INVENTOR RIGHTS AND ARTIFICIAL INTELLIGENCE

 Author: Lindsay Dunn, Senior Editor 

Recently, the Federal Circuit Court of Appeals held that patents can only be issued to natural persons.[i]  While this decision may not be surprising to some, the case is a part of the global strategy of the Artificial Inventor Project (“The Project”).[ii]  The Project is a group of scientists and lawyers attempting to update patent laws to reflect Artificial Intelligence (AI)-generated inventions.[iii]  The group is fighting for AI inventorship rights on patents, but not ownership rights. The ownership rights would still be retained by human individuals or organizations.[iv]  However, the group faces significant challenges in American law to identify AI as an inventor.[v] 

            The U.S. Patent Act states that any inventor may obtain a patent, providing that the invention falls within an applicable subject matter.[vi]  It further defines an inventor as an “individual” or “individuals” who invented or discovered the subject matter of the invention.[vii]  In 2012 the Supreme Court held that the use of “individual” as used in the Patent Act and other statutes applies to a “natural person” meaning a human being.[viii]  This means that under American law, a human person must be listed as the inventor for a patent.  The Project argues that forcing a human inventor to be listed on an AI-assisted patent hurts the rights of traditional human inventors and the integrity of the patent system itself.[ix]  In effect, humans taking credit for AI-generated inventions devalues human inventorship.[x]

On the first point, the Project argues that humans listed as inventors on AI-assisted inventions would devalue human inventors by overstating their contribution to the invention.[xi]  But the U.S. Patent Act does not require any complex level of ingenuity to be an inventor, just the discovery of a new or useful process.[xii]  The invention process includes two stages: the conception of the idea and the reduction to practice.[xiii]  To be considered a patent inventor, one must have contributed to the conception stage of the invention.[xiv]  A person who participates in the reduction to practice, for example a research assistant or patent attorney, is not qualified to be an inventor.[xv] Further, the manner of discovery of an invention has no effect on its patentability- meaning whether a person made the discovery through vigorous testing or innocent discovery.[xvi]  Why then would a person’s inventive skills be devalued whether they were tied to AI or not?

There are two different scenarios where AI plays a role in invention. First, as an automated tool and second, as a fully-autonomous system that requires no human interaction.[xvii]  The latter scenario provides a more persuasive argument for the need for AI inventorship rights.[xviii]  But at the moment, this type of AI-system does not exist.[xix] 

Considering the use of AI as an automated tool, even the Project recognizes that human interactions with AI can provide appropriate human inventors for a patent.[xx]  Control over intellectual pursuits and a contribution of ingenuity needed to create the invention is all that is needed to be considered an inventor.[xxi]  Inventors of AI-assisted inventions can include: software programmers and developers who design an AI system to solve a specific problem, skilled workers who carefully select and supply the correct data for the AI system to train on, or a person who recognizes the utility of the output of the AI-system and uses inventive skills to optimize the AI’s output.[xxii]  In this way, the use of the AI can be seen as more similar to a research assistant, than an inventor in the process- contributions of which would be considered a reduction in practice.[xxiii]  This would make AI inventorship irrelevant.

A problem does arise if the AI-assisted invention lacks a human who has contributed sufficiently to be considered an inventor.[xxiv]  Under current law, that would mean either the patent would not be granted or a human would fraudulently mis-state their contribution to the invention to obtain the patent.[xxv]  The Project argues this would hurt the integrity of the patent system and discourage innovation.[xxvi]  But without AI having inventorship rights business enterprises seem keenly interested in investing in AI- with 84% believing it will lead to greater competitive advantages.[xxvii]  This interest is focused on its power to reduce costs, manage risks, streamline operations, accelerate growth, and fuel innovation.[xxviii]  Evidently, interest in AI appears to be increasingly valuable, independent of its power to hold a patent.

As mentioned above, a fully autonomous AI system would create a need to review inventorship rights.[xxix]  In anticipation of this technology, the U.S. Patent and Trademark Office issued a Request For Comments on how to treat AI-related patent applications including questions about inventor qualifications and AI-created invention ownership.[xxx]  Current law, however, appears adequate to address the inventorship issue for AI as it exists in this moment.[xxxi]  While most countries appear to be in agreement with the U.S. stance, the Project has been successful at obtaining a patent in South Africa with a sole AI inventor.[xxxii]  Will the South African approach be the beginning of AI-inventorship in patents or an evolutionary step towards the next phase?

[i] Thaler v. Vidal, 43 F.4th 1207, 1207 (Fed. Cir. 2022).

[ii] The Artificial Inventor Project, https://artificialinventor.com/ (last visited Sep. 11, 2022).

[iii] Ryan Abbott, The Artificial Inventor Project, WIPO Magazine (Dec. 2019).

[iv] Id.

[v] See Vidal, supra note i at 1207.

[vi] 35 U.S.C. §101.

[vii] Id. §100(f).

[viii] Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012).

[ix] Abbott, supra note iii.

[x] Id.

[xi] Id.

[xii] 35 U.S.C. §101.

[xiii] Gene Quinn, Inventorship 101: Who are Inventors and Joint Inventors?, IPWatchdog (Mar. 9, 2018, 9:15AM) https://www.ipwatchdog.com/2018/03/09/inventorship-joint-inventors-co-inventors/id=94592/.

[xiv] Id.

[xv] Justin Dersh, When Artificial Intelligence Invents: Recalculating the Patent Act for AI-Generated Inventions, 73 Rutgers U.L. Rev. Commentaries 185, 190 (Summer 2021).

[xvi] Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. De C.V., 865 F.3d 1348, 1356 (Fed. Cir. 2017).

[xvii] Dersh, supra note xiv at 187.

[xviii] Id. at 190.

[xix] Id.

[xx] Abbott, supra note ix.

[xxi] Quinn, supra note xii.

[xxii] Abbott, supra note ix.

[xxiii] Dersh, supra note xiv at 190.

[xxiv] Id. at 188.

[xxv] Id.

[xxvi] Abbott, supra note ix.

[xxvii] Louis Columbus, 10 Charts that Will Change Your Perspective on Artificial Intelligence’s Growth, Forbes (Jan. 12, 2018, 1:55AM), https://www.forbes.com/sites/louiscolumbus/2018/01/12/10-charts-that-will-change-your-perspective-on-artificial-intelligences-growth/?sh=34211c564758.

[xxviii] Stephen Diorio, Realizing the Growth Potential of AI, Forbes (May 8, 2020, 6:44 PM) https://www.forbes.com/sites/forbesinsights/2020/05/08/realizing-the-growth-potential-of-ai/?sh=544cabea33f3.

[xxix] Dersh, supra note xiv at 190.

[xxx] Timothy Chou & Philip H. Albert, When AI Creates AI - Who Owns the Rights? Davis Wright Tremaine LLP, (Sept. 9, 2019), https://www.dwt.com/blogs/artificial-intelligence-law-advisor/2019/09/uspto-comments-on-ai-patent-applications.

[xxxi] Dersh, supra note xiv at 203.

[xxxii] The Artificial Inventor Project, https://artificialinventor.com/ (last visited Sep. 11, 2022).