Quarterly International Ip Law Update

• Jurisdiction: United States,Federal,European Union
• Citation: Vol. 46 No. 4
• Publication year: 2021
• Author: David Tseng, Mariana Noli, & Leaf Williams
• topic: Patent law,Intellectual Property

QUARTERLY INTERNATIONAL IP LAW UPDATE

AUTHORS

David Tseng
TSMC

Mariana Noli
Noli IP Solutions PC

Leaf Williams
Reichman Jorgensen LLP

AI AND PATENTS: DO ANDROIDS DREAM OF PATENTABLE THINGS?

Using the term "artificial intelligence" (AI) these days can spark a range of reactions, from utter befuddlement to a tingling at the nape of the neck, and fervent enthusiasm for the boundless possibilities because "nothing else is even in the same league" as far as the ability to change the world¹ and back to doomsday predictions that "the full development of artificial intelligence could spell the end of the human race."² The kaleidoscopic representation of AI in film and television has also helped fuel the debate with palpable representations of arguably evil AI in films such as The Terminator and Ex Machina, innocuous family members like those in Small Wonder and The Jetsons, and philosophic explorations of what it actually means to be human such as what we can observe in Humans and Westworld.

Since its emergence in the 1950s³ AI has become increasingly sophisticated and is used for the development of an immense amount of services and products, and some have argued creative endeavors⁴—such as creating portraits,⁵ and writing articles,⁶ screenplays,⁷ and music. Doubtless the existence, development, and governing of AI spans a multitude of disciplines, including science, art, ethics, and law. And the intersection between these disciplines and AI has recently been raised to the forefront for intellectual property practitioners worldwide with the filing of several patent applications listing AI as the inventor.

In 2018 and 2019, a team working on The Artificial Inventor Project (TAIP) announced the filing of patents for inventions generated by an AI system called DABUS ("Device for Autonomous Bootstrapping of Unified Sentience"), which was developed by Missouri physicist Dr. Stephen Thaler.⁸ The head of the project, University of Surrey Law Professor Ryan Abbott, claimed that Dr. Thaler developed a "creativity machine" that had invented a beverage container and a "device for attracting enhanced attention" and the team consequently filed applications in 17 jurisdictions around the world listing DABUS as the inventor.⁹ These applications prompted courts to consider how their own patent regimes define the word "inventor" and whether an artificial intelligence system could qualify as the "inventor."

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The applications have been met with varied results. The USPTO (United States Patent and Trademark Office), EPO (European Patent Office), and the UKIPO (United Kingdom Intellectual Property Office) have all rejected the applications. The EPO denied registration on the basis that an "inventor" must be a human being¹⁰ and emphasized that, in order to take advantage of the legal rights that inventorship conveys, an inventor must have a legal personality.¹¹ The UK decision centered on patent rules which require an inventor to be the "actual deviser" of an invention, meaning the inventor must be a natural person, and must have contributed to the inventive concept.¹² The UKIPO holding, however, concluded that "AI machines are likely to become more prevalent in the future" and acknowledged that, while the UK's present system did not accommodate for machine invention, the issue should be debated further.¹³

The USPTO also rejected the application on the basis that the Federal Circuit had twice held that an inventor could only be a natural person, and Mr. Thaler then filed a civil action in the Eastern District of Virginia seeking review.¹⁴ Judge Brinkema agreed with the USPTO, noting that statutory language in the Patent Act references "individuals" and requires inventors to execute an oath, and that "the ordinary usage of the term 'individual' [refers] to a human being, [and] artificial intelligence machines or systems are not normally referred to as 'individuals' in ordinary parlance."¹⁵ The judge also emphasized that the Federal Circuit's patent holdings were consistent as they had determined that a corporation could not be an inventor.¹⁶ Despite considering Dr. Thaler's policy arguments that allowing AI to be inventors would incentivize the development of more AI and would "discourage individuals from listing themselves as inventors without having contributed to an invention's conception merely because their name is needed to obtain a patent"¹⁷ the court granted summary judgment against Dr. Thaler. However, the court concluded "plaintiff's policy arguments do not override the overwhelming evidence that Congress intended to limit the definition of 'inventor' to natural persons. As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication...