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AI and Patent Law: Can AI Be an “Inventor”?

Fed Circuit hears case for Artificial Intelligence as Inventor

We covered on our blog in March a ruling from the Copyright Review Board regarding a case of an invention made by artificial intelligence (AI). The copyright application claimed an artwork created by a computer algorithm running autonomously on a machine.  

The Copyright Office rejected the application, stating that it could not issue copyrights to an invention in which the work was not “the fruits of intellectual labor” that are not “founded in the creative powers of the [human] mind.”  

On June 5, Dr. Stephen Thaler, owner of the AI he calls the Creativity Machine, filed suit against the U.S. Copyright Office after it refused to grant the copyright. The invention in question was computer-generated by the Creativity Machine and is called “A Recent Entrance to Paradise.” 

Thaler appears to be headed for a similar result in his effort to have another one of his AI machines — this one called the Device for the Autonomous Bootstrapping of Unified Sentience, or DABUS — recognized as an inventor. 

“A Recent Entrance to Paradise” computer-generated by the Creativity Machine 


Why Thaler Sued the Patent Office 

DABUS is listed as the inventor on two patent applications filed by Thaler with the United States Patent and Trademark Office (USPTO). The claimed inventions include a “light beacon that flashes in a new and inventive manner to attract attention (‘Neural Flame’),” and a “beverage container based on fractal geometry (‘Fractal Container’).” 

The latter of the two patents was granted in South Africa in July 2021, making it the first ever obtained patent for an AI-generated invention without a traditional human inventor.

The USPTO declined to issue the patents with DABUS listed as the inventor. Thaler sought relief before the U.S. Court of Appeals for the Federal Circuit after the U.S. District Court for the Eastern District of Virginia declined to challenge the USPTO’s ruling. 

Critical Question: Who can be an Inventor? 

Thaler, represented by Ryan Abbott, has argued that the language of the Patent Act is such that DABUS and AI can qualify as inventors. During the hearing Abbott argued that the language of the Act can refer to natural persons but not that it must refer to natural persons. In other words, “individual” and “inventor” can but do not need to mean natural persons. 

Abbott repeatedly argued that it is the purpose of patent law to promote and incentivize innovation. Judge Richard G. Taranto asked Abbott whether broadening the definition of an inventor to include pieces of software would advance or hinder innovation. 

To this end, Abbott used an example of the pharmaceutical company Pfizer using a supercomputer to make an antibody to treat COVID-19. If no patent could be obtained on the computer’s inventive activity, that would send a message to companies that they cannot use such computers and still obtain patents — thus hindering innovation, Abbott argued. 

Dennis C. Barghaan Jr. represented the USPTO. Barghaan argued that inventors are individuals as defined by the patent statute, including its use of personal pronouns to define an individual. It even uses gendered personal pronouns, as pointed out by Judge Taranto in response to Barghaan. 

Chief Judge Kimberly A. Moore asked if the programmer of the AI code on DABUS should be listed as the inventor. Barghaan responded that, in limited circumstances including this one, the programmer of the AI code should be the inventor.  

Abbott concurred regarding the possibility of a programmer being the inventor in such a case, but he cautioned as to what effects this approach might have. He warned that allowing AI programmers to qualify as inventors may bring complications such as when AI creates subsequent inventions in which the original programmer was not involved. Who would the inventor be in such a case? 

He argued that the bottom line should be the rewarding of innovation. 

Looking to the Future 

The Courts will undoubtedly have more opportunities to address the question of AI inventorship as the role of AI in technology continues to evolve. 

As the District Court noted in this case, the legislative branch has the authority to decide how, if at all, patent law may be expanded to permit something like non-human inventors. 

“…as technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship,” the District Court noted in Thaler v. Hirshfeld, 558 F. Supp. 3d 238, 249 (E.D. Va. 2021). 

The USPTO recently announced that it will be forming partnerships with AI and emerging technologies industries. USPTO Director Kathi Vidal noted the important role that the agency plays in incentivizing innovation, and that these discussions will explore how the patent system can evolve “to encourage and protect AI and ET inventions.”  

Abbott spoke at the first meeting of this new partnership on June 29. Joining Abbott on the panel, covering inventorship and the advent of machine-generated inventions, was Joshua Sarnoff, a professor of law at DePaul University, and Laura Sheridan, senior patent counsel at Google. 

Should the rules and inventorship requirements of patent law change, the attorneys of Patterson Thuente IP will certainly be following such developments. If you have questions about the patentability of your invention or other inquiries relating to patent or IP law, do not hesitate to contact us! 

(Read more about this case from Law360 and the FedCircuitBlog)


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