"INVENTORLESS" INVENTIONS? THE CONSTITUTIONAL CONUNDRUM OF AI-PRODUCED INVENTIONS.

• Author: Schwartz, David L.
• Position: Artificial intelligence

TABLE OF CONTENTS I. INTRODUCTION 532 II. DOES THE PATENT ACT PERMIT AI INVENTORSHIP? 538 III. THE MODALITIES OF CONSTITUTIONAL ARGUMENT 540 A. The Modalities of Constitutional Interpretation 540 B. The Relevant Modalities 542 IV. HISTORICAL 544 A. Patents of Importation: The Original Public Meaning of "Inventors" 545 B. Early Colonial and State Patent Practices 550 C. Contrary Intent? 552 1. Contemporaneous Comments on the Ratification of the Intellectual Property Clause and on Proposed Amendments Limiting Monopolies 553 2. Patents of Importation and the 1790 Patent Act 558 V. PRUDENTIAL 560 VI. DOCTRINAL 566 VII. TEXTUAL 570 A. The Preamble as a Limitation 571 B. Limitations in the Latter Half of the Clause 574 C. The Intellectual Property Clause as an External Constraint on Other Enumerated Powers 575 VIII. CONCLUSION 577 I. INTRODUCTION

In July 2019, computer scientist Stephen Thaler sought two patents from the United States Patent and Trademark Office ("USPTO"). (1) The first was for an adjustable, interlocking "fractal" food container designed to be easy for an automated system to carry and transport. (2) The second was for the "neural flame," an impossible-to-ignore flashing emergency beacon. In responding to Thaler's neural flame application, the USPTO gave no hint that the invention failed to satisfy the standard patentability criteria, such as utility, novelty, and nonobviousness. (3) Nor was there any doubt that the invention fell comfortably within the bounds of ordinarily patentable subject matter. (4) Nonetheless, the USPTO denied Thaler's application. How did that happen? The problem was in the paperwork.

Under USPTO procedures, each patent application must include an application data sheet that lists the inventor or coinventors of the claimed invention (5) as well as an oath or declaration certifying that the applicant or applicants were the first to invent the claimed invention. (6) Straightforward enough. But Thaler's struggle was that he did not list his name on either the data sheet or the oath--nor did he intend to do so. (7) Instead Thaler listed DABUS--an artificial intelligence ("AI") system of his own creation--as the inventor. (8)

Artificial intelligence (9) has become nearly ubiquitous in modern society. Today, AI systems power self-driving cars and assist with diagnosing medical conditions. (10) In the marketplace, retailers and streaming services use AI to create tailored recommendations for customers, and--to the irritation of many--to engage in targeted advertising. (11) More seriously, AI systems have been used during the COVID-19 crisis "in drug development, analysing and learning from large data sets to identify... new treatments." (12) AI usage has even found its way into the legal profession. For instance, "legal research services such as CARA, Clerk, EVA, and vLex" can now analyze legal briefs, considering "factors such as the procedural posture of the case, the pattern of citations, and even which citations may be missing" in order to evaluate the "strengths or weaknesses of a brief or pleading." (13) Some of these uses are admittedly modest, but the AI industry will only continue to expand: Corporate spending on AI systems is predicted to "grow from $37.5 billion in 2019 to nearly $98 billion in 2023." (14) Consequently, AI is poised to become "profoundly disruptive" across a wide range of industries. (15) And this capacity for disruption recently crash-landed in the realm of patent law.

DABUS ("Device for the autonomous bootstrapping of unified sentience"), (16) which Thaler designed, is a "creativity engine" allegedly capable of advanced problem-solving and invention without the need for specialized training or human input. (17) Using its system of neural networks, (18) DABUS purportedly produced both the inventions Thaler filed for without Thaler's assistance. (19) Indeed, Thaler indicated in the neural flame patent application that "it was the machine, not a person, which recognized the novelty and salience of the... invention." (20)

Thaler's assertions were not enough, however, for the USPTO. As the USPTO saw it, (21) United States patent law requires that an inventor be a natural person. It pointed first to the text of the Patent Act, which defines an inventor as "the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention." (22) The USPTO reasoned that the use of "individual" and other human pronouns throughout the Patent Act precluded giving the term "inventor" the broad scope necessary to encompass the concept of machine-as-inventor. (23)

The USPTO also looked beyond the plain text of the Patent Act to consider various persuasive authorities. For instance, it referenced decisions from the federal courts in analogous contexts, such as a United States Court of Appeals for the Federal Circuit decision concluding that a state could not be an inventor because it lacked the capacity for "conception," (24) and a second decision concluding that a corporation, while capable of owning an invention, could not itself be an inventor. (25) In the same vein, the USPTO pointed to numerous provisions in the Code of Federal Regulations that refer to inventors as "person[s]" and to its own Manual of Patent Examining Procedures, which identifies as a threshold requirement for inventorship the same mental act of "conception" identified in the earlier Federal Circuit decisions. (26)

Having reviewed these sources of authority, the USPTO concluded that Thaler's application did not satisfy the formal requirement that the inventor make an oath or declaration that he or she is the true inventor, thus precluding the issuance of a patent on either invention. (27) This outcome left Thaler in an awkward position: He believed that under the Patent Act, he could not rightfully claim to be the inventor of either invention, presumably because he had not satisfied the conception requirement. (28) Worse still, because "naming an incorrect inventor is grounds for rejecti[ng]" a patent application, (29) the USPTO's decision effectively rendered DABUS's inventions unpatentable; as a statutory matter, DABUS could not be the inventor, yet no natural person could rightfully claim to be the inventor either.

This decision has weighty implications and reveals major underlying problems with the patent laws. As things stand, AI-produced inventions appear to be, as a matter of law, unpatentable. (30) Given the influence that AI has come to have in wide-ranging industries, the USPTO's conclusion, if left untouched, might soon leave large swaths of inventive activity in the United States outside the grasp of patent law and the traditional economic arrangements that patents encourage. An important question, then, is whether this state of affairs is inevitable.

This Article is the first to fully consider whether, from a constitutional perspective, Congress can authorize a result that the USPTO, when facing DABUS, felt it could not permit as a statutory matter. Contrary to conventional wisdom, we conclude that, although the Constitution does not permit an AI system to be deemed an inventor, it does allow Congress to bestow the mantle of inventorship of AI-produced inventions onto various natural persons. We reach this conclusion by applying the classic modalities of constitutional argument to interpret the scope of the Intellectual Property Clause. The Article proceeds in six Parts.

Part II briefly assesses whether, as the USPTO concluded, the current Patent Act precludes issuing a patent in the name of the AI system (as opposed to a human in some way involved with the inventive process). That assessment is important because Thaler has appealed the USPTO's determination in federal court. (31) This Part concludes that the Patent Act as written prohibits issuing a patent in the name of an AI system. And, as later Parts show, this is a limitation not only imposed by the Patent Act, but by the Constitution as well.

Parts III through VI, constituting this Article's most significant contribution, assess the constitutionality of issuing patents on AI-produced inventions. Part III overviews the six modalities of constitutional interpretation. Subsequent Parts then apply several of those modalities to aid in determining the constitutional scope of inventorship.

Part IV applies the historical modality, diving into the history of the Intellectual Property Clause and the English patent practices that influenced it. Although other commentators have sometimes discussed the historical meaning of "Inventors" in the Intellectual Property Clause, none has engaged in extended analysis to determine whether that language is compatible with patenting an AI-produced invention. Thus, this Part proceeds by analyzing the original constitutional meaning of "Inventors." It concludes that the English practice of granting "patents of importation" supports a broad conception of "Inventors" that is compatible with patenting AI-produced inventions.

Part V considers the prudential modality. It assesses whether issuing patents on AI-produced inventions would comport with either the utilitarian considerations usually embraced by patent law jurisprudence or with the natural rights conception of patent law espoused by a minority of scholars. It concludes that regardless of whether one endorses utilitarian or natural rights theories to justify patent protections, strong arguments favor Congress's authority to issue patents on AI-produced inventions.

Part VI approaches this issue through the doctrinal modality. It argues that, historical considerations aside, granting patents on AI-produced inventions would be doctrinally compatible with the utilitarian and natural rights theories traditionally used to justify patent protections. It further argues that, given the wide latitude that federal court decisions have accorded Congress in crafting intellectual property...