Artificial selection

Artificial intelligence as a patent inventor

Our previous blog posts, Artificial Intelligence as the Inventor of Life Science Patents? and Update on Artificial Intelligence: Court Rules that AI Cannot Qualify As “Inventor”, discuss recent inventor issues surrounding AI and its implications for life science innovations. Continuing our series, let’s now examine appeal recently filed by Stephen Thaler (“Thaler”) in his quest to obtain a patent for an invention created by AI in the absence of a traditional human inventor.

As we previously reported, on September 3, 2021, the U.S. District Court for the Eastern District of Virginia ruled that an AI machine cannot be called an “inventor” under patent law. , in a case that Thaler filed seeking, among other things, an order requiring the USPTO to reinstate its patent claims. These patent applications name an AI system called “Unified Sensitivity Autonomous Boot Device” aka “DABUS”, as the sole inventor. Thaler, who developed DABUS, retains ownership of all patent rights arising from these applications. The first application concerns the design of a container based on fractal geometry. The second application is for a device and method for producing light that rhythmically flickers in a specific pattern that mimics human neural activity. According to Thaler, he could not register as an inventor, as he did not contribute to the conception of inventions; instead, DABUS performed what is traditionally considered the mental part of the inventive step.

On appeal, Thaler argues for a broad interpretation of the Patent Act’s inventor requirement for both technical and political reasons. He asserts that the plain language of the Patent Act permits patents to non-human inventors because terms like “individual”, “person” and pronouns referring to such entities are general terms that are not limited to natural persons and, in their ordinary sense, may include IA. Thaler further argues that the USPTO is inconsistent with its interpretation of the language of the Patent Act by limiting such terms to natural persons when discussing AI inventorship. For example, 35 USC § 271(a) uses the term “anyone” to refer to infringing entities and the USPTO has in the past interpreted “anyone” to mean either a natural person or a non-physical person. Thaler also points to the use of the term “person” and not “natural person” in the Patent Act as evidence of a deliberate choice not to exclude a broader class of inventors.

Existing case law that prevents corporations and sovereign states from qualifying as inventors is irrelevant according to Thaler, because when a corporation files a patent application, there will always be at least one natural person who qualifies. as inventor and may be named as such on the patent application. The same is not true for AI. The cases between corporations and “natural persons” do not answer the question posed by an AI-generated invention and should not be read wider than the scope of the issues presented in those cases. As Thaler states in his appeal brief “[n]o the case states a general principle that language such as “individual” or “person” and subject pronouns must mean a human being, since similar anthropomorphized language may refer to entities that are not natural persons, and this language has been interpreted to include other entities.”

Another reason why the plain language of the Patent Act allows patents to non-human inventors is that there is no “design” requirement prohibiting patents on inventions generated by the human. AI. Conception has been defined as the formation in the mind of the inventor of a definite and permanent idea of ​​the complete and operational invention. Since the two patent applications at issue satisfy the requirements for authorization and written description, they necessarily contain a precise and permanent idea of ​​a complete and operational invention. In other words, according to Thaler, the filing of each patent application itself serves as a design and constructive reduction to the practice of the object described in the application. Further, Thaler argues that, historically, design was only relevant for establishing priority of inventorship (e.g., in interference proceedings or backdating a reference to prior art) and therefore ownership of a patent application, but not as a basis for denying patent protection.

Finally, Thaler proposes that patenting AI-generated inventions be consistent with Congressional intent in that patenting AI-generated inventions encourages inventions, their public disclosure and marketing. According to Thaler “[i]This would defeat the purpose of the patent system to only allow the owner of an AI to own the output of the AI ​​as a trade secret, but not to encourage disclosure of the information in exchange. patent protection. Thaler argues that interpreting the language of the Patent Act to advance its purpose is particularly appropriate when, as here, there is no evidence that Congress anticipated and legislated for AI-generated inventions. Thaler further supports this point by noting that as technology has advanced, patent law has historically evolved to accommodate and further encourage such advancements. On the other hand, excluding an entire class of advanced inventions from patentability would undermine the patent system and ultimately hinder innovation. According to Thaler, “While other countries promote the advancement of science, the USPTO is a late adopter of Luddism.”

We will continue to monitor this call as it has significant implications for life science companies using AI technologies.

© 2022 Proskauer Rose LLP. National Law Review, Volume XII, Number 19