Monday, February 3, 2020

Most of us know that DATA, the beloved android from Star Trek, The Next Generation, is an artificial intelligence (AI) life form from the distant future with a high capacity to problem solve and innovate. But, if DATA were present today and invented a new technology, could he be an inventor on a patent for his invention?

The question of whether AI can legally be an inventor on a patent was recently addressed by the European Patent Office (EPO) and The United Kingdom Intellectual Property Office (UKIPO). The same question is still being evaluated by U.S. Patent and Trademark Office (USPTO) along with solicitation for comments to the patent community.

The case of Artificial Intelligence DABUS as inventor

A group from the University of Surrey, in the United Kingdom (UK), recently challenged the definition of “inventor” in Europe and the United States by filing two separate patent applications designating an AI entity as an inventor. The group had created an AI entity called DABUS (“device for the autonomous bootstrapping of unified Sentience”) that can be used to develop new ideas. DABUS, provided with a system of networks to generate new ideas and another system of networks to determine consequences, invented a beverage container and a flashing device used for search and rescue – the subjects of the two patent applications filed in the United States and the European Patent Offices, with DABUS named as the inventor.

In general, when a patent application is filed, it must list the inventor who invented the new technology. Although ownership of the new technology may ultimately lie with the company, the company cannot be listed as an inventor. Such ownership can only occur once the inventor transfers their ownership right to the company, typically through an assignment.

When the applications filed by the University of Surrey were recently put forth in front of the EPO and UKIPO, both patent offices refused the applications, not because the applications were not novel, but because DABUS, the AI “inventor,” was not a natural person and could not be regarded as an inventor.

Under U.S. patent law, the term “inventor” is not specifically defined, but does require that an “individual” be named as an inventor. The U.S. courts have, from time to time, been called upon to determine whether “individual” is limited to a natural person; and it is well-established that “individual” is limited to a natural person. Similarly, the USPTO provides that unless a “person” contributes to the invention, he is not an inventor.

Thus, in the United States, it appears that an AI entity cannot currently be designated as an inventor on a patent application. As noted, although an individual (i.e., inventor) or a company can own a patent, a company cannot be listed as an inventor, and thus, there is still a requirement that the individual(s) or person(s) who created the invention be listed as an inventor on all patent applications.

The DABUS case presents an interesting issue that may become more prevalent as advancements in AI continue to become more sophisticated. Since an AI entity cannot yet be listed as an inventor, nor can the company that created the AI be listed as such (the company can only be listed as an applicant for ownership purposes), inventions created and improved upon by AI systems, at present, likely will become unprotected under patent law in the United States and in Europe. This means that individuals and companies will need to seek alternative means or strategies for protecting innovations created by AI systems.

The logical approach for patents involving AI

As AI continues to evolve and grow, so will the inventions created by AI. Thus, it is unlikely that this question of AI inventorship will go away. While the interpretation of inventorship may be resolved in the courts and/or by lawmakers in due time, for now, there is a need for approaches that can protect inventions created by AI systems.

The following points can be helpful when considering how to protect inventions created by your AI systems:

While the creators of the AI system cannot be directly listed as inventors of the innovations generated by the AI, consider listing the creators as inventors of the AI system or process which yields the invention. In particular: Applicants should craft the patent application to describe how the AI system is structured and operates, as well as the invention(s) resulting from the AI system. Claims can then be carefully crafted to cover how the AI system is structured to generate the resulting invention.

Human inventors can be listed for any contributions to the claimed invention, even if part of the claimed invention is created by AI. Carefully craft claims that include some contribution provided by the human inventor. For example, the contribution can be provided as human inputs, parameters, criteria, etc., that result in the AI-generated invention, or the human can modify/improve the AI generated invention output.



Additionally, consult a patent attorney to see whether additional approaches can be taken, as claims can be case-specific, to protect the AI-generated inventions.

Human-like but not human enough

DATA once said, “We are more alike than unlike, my dear Captain. I have pores. Humans have pores. I have… fingerprints. Humans have fingerprints. My chemical nutrients are like your blood. If you prick me … do I not … leak?” Well, DATA may be human-like, but unless patent law is changed, he cannot be listed as an inventor. Until then, your patent attorney can take a creative approach noted above to ensure that any innovation by DATA is protected through his creator.