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AI-Created Inventions Are Not Patentable, Says Judge

April 15

Non-Human Inventorship

In a fascinating case, a Federal District Judge in Virginia has held that an AI cannot be an inventor and therefore cannot patent its inventions.

Last week, Judge Leonie Brinkema ruled the current patent law is “crystal clear” – only humans can be inventors. Any expansion of inventorship beyond individual human beings would require an act of Congress.

But surely the human inventor of the AI can claim inventorship of his creation’s creations, right? Nope. The human inventor cannot claim inventorship of the AI-invented inventions because he didn’t invent them.

  • The result? Useful and novel technology invented by AI is not patentable.
    As technology progresses, AI takes a larger and larger role in research & development. Given the trend, the human beings behind new technology likely will become further and further removed from the technology itself, focusing instead on developing and using the AI tools.
  • This decision is of particular interest to those of use watching the development of AI and wondering what it means for the future of IP rights. It also provides guidance to anyone who writes – or challenges – patents. And it provides a useful example to illustrate the difference between inventorship and ownership.

In this post, we’ll explain the ruling, how it may affect your company, and key takeaways for your business.  Thaler v. Iancu et al., 1:20-cv-00903 (E.D. Virginia)

The Case: What Does It Mean To Be An Inventor? Or An “Individual”?

Physicist Stephen Thaler invented an AI he calls “DABUS.”

  • For a nerdy and fascinating rabbit hole, explore DABUS and this international artificial inventor project here: https://artificialinventor.com/dabus/
  • They claim DABUS is, in a way, sentient because it experiences the equivalent of memories, which gives it an “emotional appreciation” for its inventions.
  • The whole project brings up interesting questions that cross the boundaries of metaphysics, biology and technology. Is it just a novelty such as the 19th Century automaton at the Franklin Institute? https://www.fi.edu/history-resources/automaton. Or is it the precursor of sentient AI? As I said, a fascinating rabbit hole.

Back to the case: DABUS invented two things: A beverage container with fractal surfaces, and a signal beacon it calls a “neural flame” for attracting attention in a distracting environment. Thaler and his team filed patent applications in multiple countries including the U.S., naming DABUS as the inventor.

The USPTO rejected the U.S. patent applications for failing to name an inventor on the grounds that only humans are eligible. Thaler filed suit in federal court saying the USPTO violated the law when it added a new requirement (humanity) for patentability.

Thaler’s argument: Yes, the patent law does limit inventorship to “individuals” (35 U.S.C. Section 100(f)). But no law or rule says those individuals must be humans. The point was to keep corporations from claiming inventorship.

Judge Brinkema disagreed, calling Thaler’s argument “a huge uphill battle” as “The statutory language is so crystal clear.”  In cases where the explicit language is clear, it is up to the legislature (Congress) to change the statute’s language if it no longer serves the purpose of the law.

“I think ultimately what you’re asking this court to do is legislate,” Judge Brinkema said. Stating “Courts are not legislatures,” she denied Thaler’s motion for summary judgment.

Can Thaler patent the inventions? Interestingly, Thaler did not advance the theory that he himself could be listed as the inventor of DABUS’s inventions. He agreed with the USPTO that because Thaler did not himself directly invent the inventions he was not entitled to claim inventorship of them.

He does claim inventorship of DABUS, however, which is patented. https://patents.google.com/patent/US5659666A/en?oq=5%2c659%2c666;+7%2c454%2c388+B2;+and+2015%2f0379394

The end result:  The beverage container and signal beacon are not patentable. To the extent they have been disclosed to the public, they may be in the public domain.

What’s Happening Next

Though nothing has yet been announced, I would expect Thaler and his team to appeal this decision.

What About Copyright? Expect a parallel effort to challenge U.S. Copyright law to recognize AI as the author of machine-composed music.  The DABUS patent U.S. 5,659,666 illustrates and describes the AI device being used to compose music.

  • Computer-created music is not new – the Copyright Office raised a concern about the issue as early as in 1965. AI-created music even has its own awards event. https://www.vprobroadcast.com/titles/ai-songcontest.html.
  • U.S. Copyright law does not recognize copyright in works created by non-humans. That rule recently has been upheld in the Courts in the “monkey selfie” case of 2018.

    Selfie taken by a wild macaque

https://en.wikipedia.org/wiki/Monkey_selfie_copyright_dispute. I do not expect the rule to change when it comes to animals.

But I cannot be sure what the future holds for AI authorship and copyright. AI seems a likely fit for software coding. https://singularityhub.com/2020/08/02/this-ai-could-bring-us-computers-that-can-write-software/

So, I believe the issue of AI authorship for copyright purposes will need to be addressed in the next decade. It is likely that the issue is more easily handled in the Copyright Act by modifying the current definition of “Work for Hire”, which permits an employer to be considered the “author” of a work.

What This Means For You

If your research & development activities include using or developing AI tools, keep an eye on this case. And be aware that the law is evolving a bit behind the technology, as it usually does.

If you write, challenge or interpret patents or patent applications, keep an eye on this as well. If inventorship is expanded to include AI, what does that mean for assignment or patent ownership?

Key Takeaway for everyone else: The case provides an interesting illustration of the distinction between inventorship and patent ownership. They are not the same thing.

  • Inventorship is defined by U.S. law. Regardless who is named as an inventor on a patent application, someone who does not contribute to the conception of an invention is not an inventor. This is a technical, legal definition. It is not a matter of choice or negotiation. And since false inventorship is grounds for invalidating a patent, it’s important to follow the legal definition.
  • Ownership has little to do with inventorship. Patent rights (even pending patent rights) may be assigned (given or sold) just like any other property rights. Employee inventors usually are under an obligation to assign their inventions to their employers.

Actions You Can Take To Protect Yourself from Inventorship Disputes

  • Make sure your employment agreements for R&D positions at least contain mandatory assignment language.
  • Because while your company can be the owner and even the patent applicant, it cannot be listed as the inventor. Neither can any company personnel, friends, funders or relatives who do not themselves contribute patentable subject matter to the invention.
  • Document inventorship for each invention by recording who contributed what to the project.
  • Finally, make sure your company has signed assignment agreements from all inventors (whether employees or contractors) before applying for patents.
  • And take the opportunity to collect their citizenship and residency information as well – you will need it for the patent application.

    Closing

    If humans are inventing and programming the machines that output technological advancements, should those humans be permitted to patent the machines’ inventions?

    Or would that be unfair, giving too much to the builders of tools and not enough to the users of those tools?

    Think about a tool such as CRISPR, the gene-splicing technology that has become ubiquitous. If an AI research and development tool were in such widespread and varied use, who should own the technological advancements flowing from its use?

    These issues are sure to develop further in the next 5 to 10 years. As they do, I’ll be keeping my eye on them!

  • – Catherine A. Cavella, Esq. 
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