Artificial selection

Important Policy Questions Raised by the Role of Artificial Intelligence and Inventorying | Brooks KushmanPC

In 2018 and 2019, Dr. Stephen Thaler filed a patent application naming Device for Autonomous Bootstrapping of Unified Sentience, known as “DABUS”, as the inventor of the resulting inventions. The application was filed with patent offices in the European Union, United States, and United Kingdom, and all three entities rejected the patent application based on one key point: only human inventors can get a patent.

In the United States, the Patent Act provides the legislative basis for the conclusion that inventors must be human beings. Section 101 of the Patents Act provides that “A person who invents or discovers a new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent at this effect.…” Article 102 adds that a “anybody shall be entitled.…”

In his Decision on the requestin which it rejected the patent application naming DABUS as inventor, the United States Patent and Trademark Office (“USPTO”) explained that “the design – the touchstone of inventorship – must be made by a physical person”.

While the USPTO’s decision was based on an existing clear legal rule (i.e. human or not?), the vigorous political debate around AI and patents necessitates speculation about how the law can and should (or should not) evolve to accommodate the role of AI. in inventiveness.

It is important to note that the truly difficult questions do not necessarily involve inventions that contain some aspect of AI technology. The patent world has grappled with these issues for decades. According to the USPTO“in the 16 years from 2002 to 2018, annual AI patent applications increased by more than 100%, from 30,000 to more than 60,000 per year. of all patent applications containing AI has risen from 9% to almost 16%.

What is new and unprecedented is that we are now faced with an AI which, on its own, can invent. Indeed, AI continues to evolve from a simple tool that facilitates the creation of innovative outputs to the creation of outputs itself – a painter and not just a brush. In 1950, Alan Turing posed the question: “Can machines think? We must now also consider: “Can machines invent?

The team behind the Artificial Inventor Project, the petitioners pushing for DABUS to be recognized as an inventor, certainly think so. In an article published in the June 2019 edition of the World Intellectual Property Organization (“WIPO”) magazine, Ryan Abbott of the Artificial Inventor Project argues that failure to recognize AI as an inventor could stifle the innovation and lead to misaligned incentives.

“It is important that appropriate policies are in place to deal with AI-generated works. Today, inventive AI may be a relatively insignificant part of innovation in economic terms. But AI is improving exponentially, unlike human researchers. Even in the short to medium term, this means that inventive AI could become an important part of research and development. When it does, 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 those inventions. and related patents.

The pressing policy issues around AI and patents

It’s impossible to know what’s coming next for AI and patent law policy. As Yogi Berra once said, “It’s hard to make predictions, especially about the future.” The one thing we know for sure is that machines will continue to get more advanced and technological innovation will continue to accelerate. The challenge for those who will shape intellectual property law in the years to come – legislators, regulators, judges and lawyers, to name a few – is to find common ground that fosters a partnership between machines and humans which promotes the fundamental objectives of patent law policy to promote innovation and investment in new technologies.

The debate is well under way. In 2019, WIPO hosted the “First Session of the WIPO Conversation on IP and AI” to discuss the impact of Al on IP policy, with the aim of collect feedback from the global IP community on “Questions Policymakers Need to Ask”. ”

This effort resulted, among other things, in the publication of the “Revised Discussion Paper on Intellectual Property Policy and Artificial Intelligence.” It is important to note that, although this article focuses exclusively on issues related to AI and patents, AI has an impact on many areas of intellectual property, and the discussion paper takes this into account. magnitude and scope. In addition to patents, it covers copyrights, data, designs, trademarks, trade secrets, the technology gap and capacity building, responsibility for intellectual property administrative decisions, and commentary on commonly used terms (such as “AI” and “AI-powered”) in an effort to arrive at agreed definitions.

The patent issues and related issues identified in the document are categorized as follows:

Inventory and ownership

Representative questions: (1) Should the law require a human being to be named as an inventor or should the law allow an AI application to be named as an inventor? (2) If AI-generated inventions are excluded from patent protection, what alternative protection mechanisms are available for these inventions?

Guidelines on Patentable Subject Matter and Patentability

Representative questions: (1) Should AI-generated and AI-assisted inventions be treated the same as other computer-implemented inventions? (2) If AI applications or algorithms fall under exclusions from patentability, would this incentivize AI applications and algorithms to remain secret and exacerbate the so-called black box problem?

Inventive step or non-obviousness

Representative Questions: (1) What implications will the fact that an AI application replaces a skilled person have on the determination of the prior art basis? (2) Should AI-generated content be considered prior art?


Representative Questions: (1) How should the data used to train an algorithm be treated for disclosure purposes? (2) Should the human expertise used to select the data and train the algorithm be disclosed?

Policy considerations for the patent system

Representative questions: (1) Should AI-generated inventions benefit from patent protection? (2) If so, would it be sufficient to incorporate AI-generated inventions into the current legal system, or should a sui generis system of intellectual property rights for such inventions be considered to adjust incentives for AI? ‘AI?

These are just some of the questions, related only to patents, that the document raises. Clearly, many different and difficult legal, economic and philosophical issues will have to be resolved in the years to come. Right now we have more questions than answers.

Notably, the patent section of the article ends with the following:

Is it too early to consider these questions, as the impact of AI on science and technology is still developing at a rapid pace and there is, at this stage, insufficient understanding of this impact or policy measures , if any, that might be appropriate in the circumstances?

While many of the policy questions posed above involve a great deal of complexity and uncertainty, the question of whether it is too early to consider these questions seems to have a simpler answer. Given the pace of technological advancement and the economic benefits to be reaped by securing valuable patents, it is almost certain that AI will continue to play an increasingly important role in invention. Our global patent system therefore needs to be prepared, and a big part of the preparation is tackling the difficult political issues we face.