The United States Patent and Trademark Office (USPTO), Department of Commerce, recently released a Request for Comments Regarding Artificial Intelligence and Inventorship. As there are many inventors amongst us, as well as the role IP plays in a start-up exit or M&A and for governance and the boardroom, we are taking a look at the types of questions the Department of Commerce and the USPTO are asking about how [Intellectual Property and Inventorship] + AI = the future of [exponential] innovation.
We start with the questions, then move on to the background provided by the request for comment document – which is really interesting and worth a quick review or full read.
SUMMARY
The United States Patent and Trademark Office (USPTO) plays an important role in incentivizing and protecting innovation, including innovation enabled by artificial intelligence (AI), to ensure continued U.S. leadership in AI and other emerging technologies (ET). In June 2022, the USPTO announced the formation of the AI/ET Partnership, which provides an opportunity to bring stakeholders together through a series of engagements to share ideas, feedback, experiences, and insights on the intersection of intellectual property and AI/ET. To build on the AI/ET Partnership efforts, the USPTO is seeking stakeholder input on the current state of AI technologies and inventorship issues that may arise in view of the advancement of such technologies, especially as AI plays a greater role in the innovation process. As outlined in sections II to IV below, the USPTO is pursuing three main avenues of engagement with stakeholders to inform its future efforts on inventorship and promoting AI-enabled innovation: a series of stakeholder engagement sessions; collaboration with academia through scholarly research; and a request for written comments to the questions identified in section IV. The USPTO encourages stakeholder engagement through one or more of these avenues.
Section IV. Questions for Public Comment
The USPTO invites written responses from the public to the following questions:
1. How is AI, including machine learning, currently being used in the invention-creation process? Please provide specific examples. Are any of these contributions significant enough to rise to the level of a joint inventor if they were contributed by a human?
2. How does the use of an AI system in the invention-creation process differ from the use of other technical tools?
3. If an AI system contributes to an invention at the same level as a human who would be considered a joint inventor, is the invention patentable under current patent laws? For example:
- Could 35 U.S.C. 101 and 115 be interpreted such that the Patent Act only requires the listing of the natural person(s) who invent(s), such that inventions with additional inventive contributions from an AI system can be patented as long as the AI system is not listed as an inventor?
- Does the current jurisprudence on inventorship and joint inventorship, including the requirement of conception, support the position that only the listing of the natural person(s) who invent(s) is required, such that inventions with additional inventive contributions from an AI system can be patented as long as the AI system is not listed as an inventor?
- Does the number of human inventors impact the answer to the questions above?
4. Do inventions in which an AI system contributed at the same level as a joint inventor raise any significant ownership issues? For example:
- Do ownership rights vest solely in the natural person(s) who invented or do those who create, train, maintain, or own the AI system have ownership rights as well? What about those whose information was used to train the AI system?
- Are there situations in which AI-generated contributions are not owned by any entity and therefore part of the public domain?
5. Is there a need for the USPTO to expand its current guidance on inventorship to address situations in which AI significantly contributes to an invention? How should the significance of a contribution be assessed?
6. Should the USPTO require applicants to provide an explanation of contributions AI systems made to inventions claimed in patent applications? If so, how should that be implemented, and what level of contributions should be disclosed? Should contributions to inventions made by AI systems be treated differently from contributions made by other ( i.e., non-AI) computer systems?
7. What additional steps, if any, should the USPTO take to further incentivize AI-enabled innovation ( i.e., innovation in which machine learning or other computational techniques play a significant role in the invention-creation process)?
8. What additional steps, if any, should the USPTO take to mitigate harms and risks from AI-enabled innovation? In what ways could the USPTO promote the best practices outlined in the Blueprint for an AI Bill of Rights [4] and the AI Risk Management Framework [5] within the innovation ecosystem?
9. What statutory changes, if any, should be considered as to U.S. inventorship law, and what consequences do you foresee for those statutory changes? For example:
- Should AI systems be made eligible to be listed as an inventor? Does allowing AI systems to be listed as an inventor promote and incentivize innovation?
- Should listing an inventor remain a requirement for a U.S. patent?
10. Are there any laws or practices in other countries that effectively address inventorship for inventions with significant contributions from AI systems?
11. The USPTO plans to continue engaging with stakeholders on the intersection of AI and intellectual property. What areas of focus ( e.g., obviousness, disclosure, data protection) should the USPTO prioritize in future engagements?
Background
In August 2019, the USPTO issued a request for public comments on patenting AI inventions. Among the various policy questions raised in the notice, the USPTO requested comments on several issues involving inventorship, such as the different ways a natural person can contribute to the conception of an AI invention and whether current laws and regulations involving inventorship need to be revised to consider contributions from entities other than natural persons. See Request for Comments on Patenting Artificial Intelligence Inventions, 84 FR 44889 (August 27, 2019). In October 2020, the USPTO published a report titled “Public Views on Artificial Intelligence and Intellectual Property Policy,” which took a comprehensive look at the stakeholder feedback received in response to the questions posed in the August 2019 notice.[1] With respect to inventorship, some commenters took the position that current AI could not invent without human intervention and that current inventorship law is equipped to handle inventorship that involves AI technologies. However, other commenters indicated that AI can potentially contribute to the creation of inventions in a variety of ways, including generating patentable inventions to which no human has made an inventive contribution.[2]
Subsequently, in June 2022, the USPTO held its inaugural AI/ET Partnership meeting. During a panel discussion on “Inventorship and the Advent of Machine-Generated Inventions,” there was a discussion among the panelists about AI’s increasing role in innovation. Although there was consensus that AI cannot “conceive” of inventions, some panelists contended that AI is merely a tool like any other tool used in the inventive process, while others pointed to situations in which AI systems can output patentable inventions or contribute at the level of a joint inventor. Details and a recording of the inaugural AI/ET Partnership event are available at https://www.uspto.gov/about-us/events/aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy.
While the USPTO was exploring the contours of inventorship law with respect to AI-generated inventions, the USPTO received applications asserting that an AI machine was the inventor. On April 22, 2020, the USPTO issued a pair of decisions denying petitions to name Device for Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as the inventor. The USPTO’s decision explained that under current U.S. patent laws, inventorship is limited to a natural person(s). The USPTO’s decision was upheld on September 2, 2021, in a decision from the United States District Court for the Eastern District of Virginia. Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021). On appeal, the Court of Appeals for the Federal Circuit (Federal Circuit) affirmed the holding that an inventor must be a natural person. Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022). Specifically, the Federal Circuit held that 35 U.S.C. 100(f) defines an inventor as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The court found that based on Supreme Court precedent, an “individual” ordinarily means a human being unless Congress provided some indication that a different meaning was intended. Id. at 1211 (citing Mohamad v. Palestinian Auth. 566 U.S. 449, 454 (2012)). Based on the finding that there is nothing in the Patent Act to indicate Congress intended a different meaning, and that the Act includes other languages to support the conclusion that an “individual” in the Act refers to a natural person, the court concluded that an inventor must be a natural person. Id. The court explained, however, that it was not confronted with “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Thaler v. Vidal, 43 F.4th at 1213.
In addition, there is a growing consensus that AI is playing a greater role in the innovation process ( i.e., AI is being used to drive innovation in other technologies). For example, at the AI/ET Partnership meetings, the USPTO heard that new AI models are being used in drug discovery, personalized medicine, and chip design. As noted above, some stakeholders have indicated that technologies using machine learning may be able to contribute at the level of a joint inventor in some inventions today. Further, Congress has taken note of the increased role that AI plays in innovation. On October 27, 2022, Senators Thom Tillis and Chris Coons called on the USPTO and the U.S. Copyright Office to jointly create a national commission on AI to consider changes to existing laws to incentivize future AI-related innovations and creations.
In the wake of the Thaler decision and in view of the current state of AI and machine learning, there remains uncertainty around AI inventorship. This uncertainty is becoming more immediate as AI, particularly machine learning, systems make greater contributions to innovation, as noted above. If these technologies are in fact capable of significantly contributing to the creation of an invention, the question arises whether the current state of the law provides patent protection for these inventions. Accordingly, in order to foster and promote AI-enabled innovation, the USPTO requests further stakeholder feedback on the current state of AI technology in the invention-creation process and on how to address inventions created with significant AI contributions.
What Next? OSTPO AI and Emerging Technology Partnership Engagement and Events
The USPTO’s goal is to foster and protect innovation in Artificial Intelligence (AI) and Emerging Technologies (ET) and bring those innovations to impact to enhance our country’s economic prosperity and national security and to solve world problems. Activities include:
- The AI/ET Partnership is an ongoing cooperative effort between the USPTO and the AI/ET community, including academia, independent inventors, small businesses, industry, other government agencies, nonprofits, and civil society. The USPTO seeks to engage the AI/ET community on ongoing and future USPTO AI/ET efforts, such as using AI and ET within the agency to enhance the quality and efficiency of patent and trademark examination. Additionally, the USPTO seeks the public’s views on various intellectual property (IP) policy issues that uniquely affect the AI/ET community.
- The AI/ET Partnership will began with a series of meetings in 2022 exploring AI/ET-related initiatives at the USPTO and IP policy issues impacted by AI and other ET. Participants from across the AI/ET community, as well as anyone with an interest in AI/ET, are encouraged to participate in these recurring meetings and provide feedback.
- This document is also insightful from an emerging technologies and policy perspective: Federal Register: Events for the Artificial Intelligence and Emerging Technologies Partnership.
