The Future of Ai Protection

• Jurisdiction: United States,Federal
• Publication year: 2021
• Citation: Vol. 4 No. 1

Paul A. Ragusa and Nick Palmieri^*

This article looks at whether (and how) intellectual property protection can apply to the results produced by an artificial intelligence, such as a new technology, a song, or even new data.

While businesses and innovators develop artificial intelligence ("AI") technologies, intellectual property ("IP") protection for these technologies has struggled to keep up in all contexts. The main IP regimes—copyrights and trade secrets—for protecting these assets apply to AI technology in two contexts.

The first context is IP protection of an AI itself, such as providing protection to the code that forms an AI or use of the AI.

The second context, which has been gaining relevance in recent years, is IP protection of the output of AI.

This article looks at whether (and how) IP protection can apply to the results produced by an AI, such as a new technology, a song, or even new data.

Patents

In recent years, patent applications directed to AI technologies have grown significantly, reflecting the increased importance that businesses are placing on such inventions.¹ The U.S. Patent and Trademark Office ("USPTO" or "Office") has adapted its procedures in order to adapt to these inventions. While patents related to computer software (a category encompassing AI) can in some circumstances be difficult to obtain, AI inventions can receive patent protection.

On the other hand, patent offices worldwide have just begun to address a separate but related issue: how to treat the output of AI, specifically whether these outputs are eligible for patent protection. Thus far, patent offices have not granted patent protection to the output of AI.²

Recently, a decision by the USPTO has firmly declared that an AI cannot be listed as the sole inventor on a patent application, which seems to settle the issue until future changes to the law.

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Output

In 2019, without input from its creator, Dr. Stephen Thaler, DABUS produced two designs (one directed to a fractal food container, one directed to a beacon for attracting attention), which Dr. Thaler submitted as patent applications in the United States, the United Kingdom, and the European Patent Office ("EPO"). These applications spurred a flurry of speculation and theorization regarding whether or not AI should be eligible as inventors for patents, and if so, how offices could achieve such goals.³

Last year, both the United Kingdom and the EPO refused registration on the grounds that an AI cannot be listed as an inventor under the respective rules of each office;⁴ and last April the USPTO finally released its much anticipated decision.⁵ Citing to the U.S. Code, the Code of Federal Regulations, the Manual of Patent Examining Procedure, and case law, the Office finally rejected the applications on the basis that "the patent laws require that an inventor be a natural person."

In support, the Office cited to two U.S. Court of Appeals for the Federal Circuit decisions, University of Utah v. Max-Planck-GesellschaftzurForderungder Wissenschaften e.V., where the court held that a state could not be an inventor,⁶ and Beech Aircraft Corp. v. EDO Corp., where the court held that a corporation could not be an inventor ("only natural persons can be 'inventors'").⁷ Given this decision, and the background Federal Circuit decisions, it appears that only natural persons are entitled to inventorship, at least until Congress or perhaps the U.S. Supreme Court gets involved.

However, the Federal Circuit in Bozeman Financial LLC v. Federal Reserve Bank, questioned whether quasi-governmental entities (for example, Federal Reserve Banks) could be considered "persons" under the America Invents Act ("AIA"), and thus eligible to bring post-issuance proceedings. In its ruling,⁸ the court held specifically that "the Banks are 'persons' under the AIA."⁹ The decision casts doubt on the USPTO's understanding that the Federal Circuit requires a natural person to be an inventor under the AIA.

Regardless, as AI technologies continue to be developed and applied in industries across the world, the products of these technologies appear ineligible for patent protection within the United States, at least until further action by Congress or the courts.

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Copyrights

Software has long been eligible for copyright protection within the United States,¹⁰ and so naturally extends to protection of AI software as well. And these AI in turn have begun producing works of their own, works that, if created by a human, would almost certainly qualify for copyright protection.¹¹ Yet still the question persists of whether or not works created by an AI qualify for copyright protection.

In the United States the answer appears to be "no," though the answer is perhaps not as clear as some may think. Case law and the rules of the U.S. Copyright Office indicate that a human needs to be involved (at least to some degree) in order to fulfill the authorship requirement of copyright law.

AI Software

As mentioned, copyright protection is widely used to protect software, and thus can be relatively easily extended to AI software. That said, AI covers a variety of different sub-technologies,¹² and some AI programs are even being developed that can modify themselves.¹³ These intricacies may impact the process of achieving such protection.

As per the U.S. Copyright Office's Circular 61, which outlines the registration requirements for computer programs, an application for copyright must include three things: an application form, a nonrefundable filing fee, and a nonreturnable deposit.¹⁴ This deposit can contain different materials depending on what is being submitted. Generally, source code must be included in the deposit, though the entire source code need not be submitted.¹⁵ However, for each version of a program, a new application (including fee and deposit) should be filed.

When it comes to AI that is capable of evolving on its own, or is changed in response to new training data, a new version may need to be submitted with each change. The Office does allow for registration of derivative computer programs, which requires submission of the new source code or materials involved, though it does still require payment of a new application fee.¹⁶

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Output

Protection of an AI itself is not the only context in which AI interacts with copyright protection. Considering the increasing ability of AI to generate comprehensible works, such as music, pictures, and even poetry,¹⁷ many are looking into ways that would allow copyright protection to extend to those works. However, within the United States, such protection does not appear to be forthcoming.

First, the Copyright Office and courts currently do not recognize AI as authors under the law, therefore, any "works" an AI create cannot now qualify for protection.

Likewise, works made for hire,¹⁸ which do not require an author, do not appear to fulfill the requirements for this protection.

As Author

The U.S. Copyright Office has made it clear that to qualify as a work of "authorship," the work "must be created by a human being." The Office even specifies that it will not register works "produced by a machine . . . without any creative...