LawFlash

USPTO Refuses to Recognize AI Inventorship, but Policy Questions Still Linger

May 19, 2020

While the US Patent and Trademark Office recently ruled that an artificial intelligence could not be named as an inventor in a patent, there are concerns that such nonrecognition will deter future innovation.

The US Patent and Trademark Office (USPTO) decided[1] on April 22 that the artificial intelligence (AI) known as DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) could not be named as an inventor on an application for a patent on an improved beverage container. The USPTO rejected this bid for AI inventorship, citing a panoply of statutory language, including 35 USC §§ 100, 101, and 115; the Manual of Patent Examining Procedure; and Federal Circuit cases[2] holding that “only natural persons can be ‘inventors.’”

While acknowledging that these prior rulings dealt with issues of corporate inventorship, the USPTO concluded that the holdings are equally applicable to issues of AI inventorship since the discussion of “conception as being a ‘formation in the mind of the inventor’ and a ‘mental act’ is equally applicable to machines and indicates that conception—the touchstone of inventorship—must be performed by a natural person.”[3]

The petitioners argued that AI inventorship should be recognized because both the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) had determined that DABUS “created the invention at issue.” But the USPTO rejected this argument because regardless of UK or European law, “[US] patent law does not permit a machine to be named as the inventor in a patent application.”[4] Moreover, the UKIPO and EPO determinations nonetheless concluded—like the USPTO—that regardless of whether DABUS “created” the invention, “DABUS cannot be named as the inventor.”

The petitioners also argued that “allowing a machine to be listed as an inventor would incentivize innovation using AI systems, reduce the improper naming of persons as inventors who do not qualify as inventors, and support the public notice function by informing the public of the actual inventors of an invention.”[5] The USPTO held, however, that these policy considerations “do not overcome the plain language of the patent laws as passed by the Congress and interpreted by the courts.”[6]

Future Innovations May Not Be Protectable Without AI Inventorship

The petitioners in this matter are members of the Artificial Inventor Project, and outside of the USPTO action, they have written about the need for patent law to recognize AI inventorship. They warn that without such recognition, future innovations may not be protectable by patents.

While it is tempting to believe that computers and associated programs are just tools and their operators or creators are the “inventors” of any output, the Artificial Inventor Project argues that this is not the case:

When someone instructs an AI to solve a problem, that person may qualify as an inventor if he or she formulates or structures a problem in a manner that requires inventive skill but not where a problem is obvious or already understood.


Similarly, a programmer or AI developer might qualify as an inventor where he or she has designed an AI to solve a specific problem or where he or she has been required to skillfully select training or input data. But a programmer is probably not an inventor where he or she has merely contributed to an AI’s general problem-solving capabilities without being aware of the specific problem the AI is being applied to or its ultimate output. The connection is even more tenuous where many programmers spread over time and space are involved in developing an AI.[7]


Ultimately, the Artificial Inventor Project warns that because “AI may become a significant part of research and development . . . it will be seriously problematic if we lack clear rules on whether AI-generated inventions can be protected, who, or what, should be listed as an inventor, and who owns these inventions and related patents.”[8]

What then should AI inventorship rules look like, and how can the patent system allow for AI inventorship without lowering the standards for patentability?

One solution, proposed by Drs. Sanker and Wang, is to require any application for an AI-invented patent to include a certification from a human surrogate that “the AI inventor did not take or acquire the invention from any external source.”[9] They add that “placing such a burden on a human surrogate would create an incentive for AI platform developers to make their systems transparent,” which is “preferable to ignoring the issue or attempting to deny the reality of AI inventors.”[10]

Additional Resources

If you are interested in learning more about this subject matter, please join us on May 26 for a webinar on AI and copyright. We will discuss, among other topics, the current state of copyright law as it relates to AI and Big Data and how copyright may be used to protect AI in the future. This webinar is part of Morgan Lewis’s annual Technology May-rathon, which offers webinars on current technology issues, trends, and developments.

Contacts

If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Andrew J. Gray IV (Silicon Valley) and Jacob J.O. Minne (Silicon Valley), or any of the following lawyers:

Boston
Steven J. Frank

Orange County
Christopher D. Bright
Andrew D. Mickelsen

Philadelphia
Kenneth J. Davis

San Francisco
Brett Alan Lovejoy, Ph.D.

Shanghai
Shaobin Zhu

Silicon Valley
David V. Sanker, Ph.D.
Liying Sun, Ph.D.

Washington, DC
Robert C. Bertin



[1] Decision on Petition (Apr. 22, 2020).

[2] Beech Aircraft Corp. v. EDO Corp., 990 F.3d 1237, 1248 (Fed. Cir. 1993); Univ. of Utah v. Max-Planck-Gessellschaft zur Forderung der Wissenschaften e.V., 743 F.3d 1315 (Fed. Cir. 2013).

[3] Decision on Petition at 6.

[4] Id.

[5] Id. at 7.

[6] Id.

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

[8] Id.

[9] Sanker and Wang, “Can the US Patent and Trademark Office handle ‘artificial inventors’?Daily Journal (Sept. 30, 2019).

[10] Id.