On April 5th, a federal judge in the U.S. District Court of Virginia heard summary judgment arguments on this very issue in Thaler v. Iancu. Thaler brought this action to challenge the current legal definition of inventorship of patent applications after the United States Patent & Trademark Office had rejected two of his patent applications for failing to identify a person as inventor in non-compliance with the Patent Statute’s statutory requirements. Instead, he had named an artificial intelligence (AI)-based system, DABUS, as the inventor and disavowed any notion of being named a sole or at least a joint inventor. Thaler may well have brought as a test case given AI’s increasing role in R&D in industries ranging from the life sciences to chemistry to engineering.
The judge is expected to rule in favor of the USPTO on the basis of the patent statute’s definition of inventor which states: “The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” Any change in the definition of inventor to include AI will require intervention by Congress.
The issue is not, however, as simple as expanding the definition to include the AI. For example, an Inventor must contribute to the conception of the invention. As the Manual for the Procedure for Examining Patents (MPEP) states, “[t]he threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor.” MPEP § 2019.
In understanding the legal definition of inventorship, it is important to understand that the inventor is not required to reduce the invention to practice. “Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.” MPEP § 2019 citing a 1991 case from the Board of Patent Appeals and Interferences.
Can AI spontaneously conceive of an invention without any human input or is it actually being directed to reduce a human-inputted concept to practice? Under this scenario, AI cannot be an inventor even if the definition for inventor is expanded to include AI.
Additionally, assignment of patent rights is a common practice. Generally, any scientist or engineer employed by a company is required to execute and assignment of any patent rights resulting from his or her endeavors to the company-employer. The company generally files the patent application as the assignee wherein the inventors must always be named. Another common patent assignment scenario is one where the inventor, as the patent owner, assigns another person, often a business entity, to commercialize the patent. Patent licensing is another common business transaction surrounding issued patents. These routine contractual business transactions will clearly become complicated if AI is allowed to be named as an inventor. Why? Because the party to an agreement must have the requisite intent to enter into the agreement. Can AI have that requisite invent to assign its patent rights or enter into a licensing agreement?
Other considerations include: 1) An AI machine’s ability to have standing to sue or be able to testify as the inventor in a patent infringement lawsuit; 2) Ownership rights in any resulting patentable invention if the AI machine was designed by an independent person and purchased by the inventor. Here, any purchase contracts should unequivocally state that any resulting patentable technology resulting from the usage of the AI machine belongs to the purchaser of that machine. But what if the AI machine is named as the inventor? The point is that any such contracts involving AI must be carefully tailored to anticipate possible scenarios.
This commentator is not in favor of having AI named as an inventor perhaps because of a bias in favor of the human brain as the ultimate source of creativity and ingenuity. Instead, Congress should first address the upheaval in intellectual property law caused by simply bad court decisions in U.S. patent law concerning patent eligibility under § 101 and just this month, the questionable application of the fair use doctrine in a copyright law case. Click here for a link to the blog on the copyright case. There is also no question that human ingenuity is what created AI in the first place and that AI is here to stay.
As an alternative to complicating the patent law business transactions that are so essential to acquiring investment funding and commercially exploiting patented inventions, a separate statute for thoughtfully addressing the unique aspects of AI-involved inventions is suggested. This suggestion of a separate patent classification has precedent through plant patents and design patents – types of patents that are separate and distinct from utility patent applications, the very type of patent application at issue in the Thayer case.
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