I'm Not "human" After All: Artificial Intelligence and the Inventorship Requirement
| Publication year | 2021 |
| Author | Mimi S. Afshar |
Mimi S. Afshar
NCCU Intellectual Property Clinic
INTRODUCTION
(See end of this article for information on receiving 1.0 hour MCLE self-study credit.)
Artificial intelligence ("AI") is ubiquitous; it has been evolving exponentially, while simultaneously generating excitement about how it has increased prosperity and transformed our lives in multiple ways. Our smartphones help us navigate around town, virtual digital assistants such as Alexa and Siri respond to our questions, and social media channels such as Facebook, Instagram, and Twitter help us remain connected. Furthermore, financial institutions, pharmaceutical companies, and insurance companies all utilize AI to their advantage and to obtain leverage over their competitors. In particular, in the case of the COVID-19 pandemic, the role of AI has never been so crucial.1
Notably, many leaders in the tech field are skeptical about AI; some authorities such as Stephen Hawking have even issued warnings: "[t]he development of full artificial intelligence could spell the end of the human race."2 Regardless, AI continues to be at the forefront of technological development. Similar to coping with changes brought by the Industrial Revolution, legislatures need to embrace AI and be mindful of the challenges and effects that AI has on different laws, in particular patent laws.
Further, AI is related to innovation, the protection of which in turn is partly governed by patent laws. This leads to questions regarding the ramifications on patent inventorship in the AI arena. One key question is whether AI can be considered an "inventor" of a patent application. The United States Patent and Trademark Office ("USPTO") has provided its answer by clearly rejecting AI as an "inventor," since AI cannot meet certain statutory definitions for an inventor or the jurisprudential tests for determining inventorship.3 Importantly, the Patent Act does not expressly limit inventorship rights to humans, but it does suggest that each inventor must have a name and be an "individual."4
[Page 10]
An innovation is on the horizon wherein the advances following AI will continue to transform our lives, business and the global economy.5 In exploring this exciting territory, one should consider what types of patent law policies will help promote innovation and the progress of science, consistent with the United States ("US") Constitution.6
To answer these issues, this article focuses on AI and patent laws—mainly, on whether AI should be considered an "inventor" under the patent statutes. Unlike other scholars, I submit that AI can be the inventor, and allowing AI to be listed as an inventor would incentivize innovation. Furthermore, statutory recognition of AI as an inventor would encourage human inventors to invest in developing inventive AI systems, as they will be assured they can patent the results.7
WHAT IS AI?
In general, defining AI is a difficult task. One reason is because a clear, general definition for intelligence is lacking. Artificial intelligence refers to the simulation of human intelligence in machines that are programmed to think like humans and mimic their actions. The term may also be applied to any machine that exhibits traits associated with a human mind, such as learning and problem solving. In the 1950s, the fathers of the field, Marvin Minsky and John McCarthy, described AI as any task performed by a program or a machine that, if a human being carried out the same activity, the human had to apply intelligence to accomplish the task.8
Hollywood movies are replete with "bad" robots. In the classic 1968 movie 2001: A Space Odyssey, HAL ("Heuristically-programmed Algorithmic" computer) was the evil AI computer and the corresponding "control center of the Discovery One spacecraft."9 Anyone who thought AI only existed in the movies thanks to the magic of cinema and "ahead of their time writers," may have been pleasantly surprised when IBM introduced Watson,10 a computer system developed to compete on the game show Jeopardy.11 IBM described Watson as one of a new generation of machines capable of "computational creativity.12 Notably, in 2011, Watson beat two former Jeopardy! winners on the show, earning $1 Million.13
John McCarthy, who coined the term "Artificial Intelligence," has defined AI as "the science and engineering of making intelligent machines, especially intelligent computer programs."14 Here, I focus on the definitions relevant to patents because of the question of AI regarding inventorship. Matthew Scherer's definition of AI is most suitable: "[m]achines that are capable of performing tasks that, if performed by a human, would be said to require intelligence."15 Indeed, this machine-borne intelligence perceives data from the outside world and decides which activities to engage to maximize its probability of success in achieving its ultimate goal.16 Thus, AI has created inventions that humans are capable of creating, but undoubtedly the AI-generated inventions occur with greater efficiency. And as AI evolves, it becomes invaluable for solving specific problems and it will improve human skills such as accuracy, speed, and capacity to process vast amounts of data.
WHEN INNOVATION INVENTS—WHAT ARE AI'S PATENTABLE INVENTIONS?
The Creativity Machine (CM) and Watson are early examples of computer inventors, but others also exist.17 CM is a computational paradigm that "came the closest yet to emulating the fundamental mechanisms responsible for idea formation."18 The Creativity Machine generates novel ideas through the use of artificial neural networks, whereby collections of on/off switches automatically connect themselves to form software without human intervention.19 Watson, however, "generates millions of ideas out of the quintillions of possibilities, and then predicts which ones are best."20 This feature places Watson in a different AI platform from CM because Watson utilizes a more conventional architecture of logical deduction combined with access to massive databases containing accumulated human knowledge and expertise.21 Although Watson is not modeled after the human brain, it is also capable of generating novel, nonobvious, and useful ideas.22
[Page 11]
More recent inventions were made by "DABUS AI." DABUS (Device Autonomously Bootstrapping Uniform Sensibility) is an AI system created by Dr. Stephen Thaler, who is a pioneer in the area of AI. Thaler reported that AI 'DABUS' goes far beyond the usual machine on-off patterns of neural structures.23 DABUS "invented" an improved beverage container designed for safer handling and transportation, and a neural flame device used in search-and-rescue missions, both without any human intervention.24
STATUS OF AI IN CHINA, EUROPE, AND THE US REGARDING INVENTORSHIP
While an AI system may create an invention that meets the statutory requirements for patentable subject matter, the question remains whether AI can be considered an inventor and whether it can be granted patent rights. In China, for example, Rule 13 of Chinese Patent Law Implementing Regulations regards an "inventor" or "designer" as "any person who has made creative contributions to the substantive features of an invention-creation."25 Further, the Chinese Examination Guidelines explain that the "inventor" shall be an individual, and an organization or company is not qualified to be "inventor."26
A recent (Sep. 2020) UK High Court of Justice Decision27 concerning DABUS as an inventor is also instructive. In this case, Stephen Thaler filed two UK patent applications under his own name, but listing DABUS as the inventor. Justice Smith provided that the definition of "inventor" is the "person who is the actual deviser of the invention,"28 and "[b]ecause DABUS is a thing, it cannot even hold property, let alone transfer it."29 Thus, "Dr. Thaler was a person but not the inventor; and DABUS was the inventor but not a person."30
However, Justice Smith also provided that "...nothing in this analysis should be taken to suggest that DABUS is not itself capable of an inventive concept. ...DABUS is not, and cannot be, an inventor..., simply because DABUS is not a person."31
Overall, this decision highlights that, in the UK, the Patents Act 1977 does not allow recognition of AI as an inventor, but the court recognized that the legislature is the more appropriate body to address the issue.32
As another comparative example, Rule 19(1) of the Implementing Regulations of the European Patent Convention (EPC) does not require that the inventor is a human, but serves only the purpose of properly identifying the inventor, including requiring a "family name."33 An inventor named in a European patent presumably must be a natural person.34 In fact, at the end of 2019, the European Patent Office (EPO) rejected AI 'DABUS' as the inventor of the two patent applications filed for the two inventions allegedly created by DABUS AI,35 paralleling the same rejections by the UK patent office.
Finally, in the US, Thaler had similarly filed a patent application listing DABUS as the inventor.36 The USPTO responded by issuing a series of Notices "requiring the inventor to be identified by his or her legal name."37 Thaler contended that "inventorship should not be limited to natural persons, and, therefore, the naming of DABUS as the inventor...is proper."38
The Decision held that the patent statutes preclude a broad interpretation of "inventor" to cover machines.39 The USPTO cited the language of 35 U.S.C. § 101, noting the reference to "Whoever invents or discovers..." (with "whoever" meaning a natural person), along with 35 U.S.C. § 115(b) citing "himself" or "herself" as to the individual who is believed to be the original inventor, and 35 U.S.C. § 115(h) providing that "[a]ny person making a statement...."40 Moreover, the USPTO cited the Federal Circuit's proclamation that "only natural persons can be 'inventors.'"41
Accordingly China...
To continue reading
Request your trial