Sophisticated Solutions For Modern Legal Challenges

The U.S. Patent Office Rules That A.I. Cannot be Listed as a Legal Inventor

On Behalf of | Aug 13, 2020 | Patent Law

The U.S. Patent and Trademark Office (USPTO) published a decision in April that they will not process patent claims made by artificial intelligence (AI). The ruling has confirmed that only “natural persons” should have the right to apply for a patent. If your business is involved in AI systems, you may be wondering who should file a patent application for a product made by one of your systems. Up until now, the USPTO has been vague about the difference between machines and humans when it comes to applications. After this new ruling, it is clear that your AI system cannot file a patent application.

What Happens When AI Systems Make Inventions?

Last year, an AI system made two inventions. The system, named DABUS, created a food container that shape-shifts and an emergency flashlight. Although these inventions were somewhat mundane, the fact that the system invented two products that are patentable begs the question: Do inventors need to be human to qualify for a patent? The creator of the DABUS AI system, Stephen Thaler, argued that it was not morally right for him to be listed as the product’s inventor because he did not help the AI system invent the products.

As an analogy, if an archaeologist professor teaches students the fundamentals of archaeology, he cannot claim ownership of the student’s architecture plans on a building they designed after they graduated. The same could be said for AI systems. The creator of the AI system only gave the AI system the tools needed to invent the product. The creator does not actually do the work of inventing the final complex product.

Arguments Made by the Artificial Inventor Project

Last year, the Artificial Inventor Project submitted patent applications to the USPTO. The group also submitted patent applications to the European Patent Office (EPO), and the UK’s Intellectual Property Office (IPO). All three groups ruled that an inventor in a patent application must be a human. Specifically, they all ruled that only the AI system’s research can be listed as an inventor, not the AI system DABUS itself.

Before issuing the ruling, the USPTO asked the public to submit their opinions on the controversial product. The Artificial Inventor Project has made clear through the process that it is not arguing that the DABUS AI system should legally own the patent, only that they list the DABUS system as an inventor.

One of their key arguments is that with the increase of inventions created by AI systems, it will be necessary to name the system itself. In some cases, thousands of employees contribute to an AI system, such as IBM’s AI Watson supercomputer. The computer itself cannot invent a product or solve a complex problem unless many human employees put the time and work into creating a working and useful AI system. They contend that as long as no human was involved in creating the final invention or solving the problem, no human should take the credit of solving the problem.

Additionally, they contend that when no human works on creating the final product, it will be difficult, if not impossible, to secure a patent for the product. In order to secure a patent, the applicant must be able to prove that he or she invented the product. In the case of DABUS, no human who created DABUS actually put mental or physical energy into creating the flashlight or the container. Companies are concerned that they will not be able to protect their inventions legally, leading to lost profit and competitors appropriating their work and selling it for themselves.

Will the Refusal to Recognize AI Systems as Inventors Stifle Innovation?

The research surrounding AI is still in its infancy. Proponents of listing AI as inventors argue that not allowing an AI system to be listed as an inventor stifles innovation. It can take years or even decades to produce an AI system capable of creating an invention. The process is extremely expensive, as well. Not allowing companies to list an AI system as the inventor may stifle innovation since the value the machines add is not being legally recognized. If machines could be recognized, their contributions may be seen as more valuable by the scientific community.

The USPTO’s Ruling Regarding AI Patents

The USPTO used to be vague when it came to whether or not AI systems could apply for patents. Prior to the ruling, the relevant application rules referred to the inventor as an “individual.” Using this terminology, the creator of an AI system could easily claim that the system is an inventor.

In their ruling, the USPTO made clear that “only natural persons may be named as an inventor in a patent application.” In their analysis, they reasoned that US patent law frequently refers to the inventor filing the patent with human-like terms. For example, the regulations refer to the inventor as “whoever” and use pronouns such as “himself” and “herself.”

Europe and the UK Have Also Denied Patents Filed by AI

The owners of DABUS have also tried to file patents in the UK and Europe. These regions have similarly denied DABUS parenthood over the ideas, ruling that only natural persons can submit an application for a product. Unless the laws change in the future or the USPTO reverses its ruling, AI systems will likely continue to be viewed as merely one tool for inventing products, rather than an inventor who contributed to the process.

Contact an Experienced AI Patenting Lawyer

AI patent activity has increased exponentially in the last few years. If you are part of a tech startup that needs to patent AI technology, or products made through the use of AI,AU LLC can help. We are an intellectual property law firm that focuses solely on protecting the intellectual property rights of our clients. We represent clients in the greater Chicago area and across the country. Contact our AI patent law firm today to schedule your initial consultation.