I, Inventor: Should AI systems be listed as inventors in patent applications?

I, Inventor: Should AI systems be listed as inventors in patent applications?

Patent law in North America does not allow AI machines to be listed as inventors, but a recent U.S. Supreme Court ruling shows why the current patent law framework might be outdated.
I, Inventor: Should AI systems be listed as inventors in patent applications?
Ibrahim Abuallail
Research Assistant
Nina Rafeek
Marketing + Communications Specialist
September 19, 2022
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Current patent laws in North America do not allow AI machines to be listed as inventors, but a recent U.S. Supreme Court ruling shows why the current patent law framework might be outdated.

On August 5th, a U.S. appeals court ruled that an artificial intelligence system (AI) cannot be named as an inventor on patent applications. The ruling was based on the Patent Act, which states that inventors must be natural persons.

The case was brought forward by Stephen Thaler, who created a machine named DABUS (Device for the Autonomous Bootstrapping of Unified Sentience). The machine, Thaler claims, is an improvement to a line of AI systems named “Creativity Machines,” which were developed specifically to create new products independently of human intervention. In this case, DABUS created an improved version of a beverage container that can be gripped by robots more easily, and a light beacon used in search-and-rescue missions that mimic human neural activity, making the flicker sequence it produces harder to ignore.  

After his patent was rejected by the U.S. Patent and Trademark Office for naming DABUS as the inventor, Thaler filed an appeal in the U.S. District Court, and was rejected for the same reasons. On the other hand, the same patent request was eventually approved in Australia, where Justice Beach set a precedent by concluding that an inventor could be an AI machine, under the Australian Patent Act.

The blurred line between AI and an inventor

Thaler’s case serves as a harbinger for potential issues concerning inventorships of patents. While the DABUS machine was Thaler’s creation, as AI technology improves, advancement in systems like DABUS, built for the sole purpose to make inventions on its own, has the potential to be commonplace in the near future. These machines might arrive at a time when patent laws still stipulate that only humans can be inventors. If this becomes the case, valuable AI inventions will be unpatentable under the current U.S. and Canadian patent framework. Therefore, it may be time to discuss and create a framework to account for such AI systems to be named inventors now. 

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An AI machine that is capable of editing and updating its code, methods, optimization technique, and finds and solves its own problem, could present its owners, developers, and users with challenges to explain how they are the true inventors of its output.

Ibrahim Abuallail

A brief history of patents

Frumkin (1947) writes that the first recorded patent pre-dates the industrial revolution, given in 1421 in Florence, Italy, to a famous architect named Brunelleschi, who invented a barge to transport marbles. In Canada, the Patent Act first came into effect in 1869. Patents were developed to incentivize innovation by giving exclusive rights to owners, but they also help disseminate technical knowledge that can be used in further inventions, and prevent wasteful innovation efforts by others working to create the same invention. Farre-Mensa et al. (2016) found that patent laws help startups and small businesses in innovation and growth, and that delays in patent examination can have major negative consequences for them and for their inventors (such as reducing firm growth, job creation, and innovation). 

AI and the current patent framework 

Afshar (2022) explains that patent laws require an oath and declaration that the applicant is the true inventor. Failure to include inventors, he notes, can render a patent unenforceable. There is legal precedent for this, with many patents being successfully challenged in court due to claims surrounding the inventors (whether the list of inventors was complete or accurate). 

In the U.S., an invention is seen as a 2-step process:

  1. Conception of the idea or subject matter of the patent claims, which may be comprised of several claims; and 
  2. Reduction of the idea to practice, or making a working example of the claimed invention.

U.S. law considers inventors as those involved only in the first step, with an exclusive focus on the “conception” of ideas that lead to inventions, or as Judge Graham (the presiding judge over the landmark patent case, Townsend V Smith 36 F.2d 292) put it, “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.”

An AI developed for a specific purpose, and given predictability that it would be able to generate results, could only be classified under the 2nd point, and hence not considered an inventor. 

Re-drawing the line…

However, Tull and Miller (2018) explain that AI systems are becoming advanced enough to generate new inventions and develop their own code, with more complex machines expected in the coming few years. In such cases where an AI changes past its initial programming, and develops an unpredictable result, method, or technique, the question of who should be listed as the inventor becomes more complicated and unclear. 

An AI machine that is capable of editing and updating its code, methods, optimization technique, and finds and solves its own problem, could present its owners, developers, and users with challenges to explain how they are the true inventors of its output. In other words, if humans were to be listed as inventors on a patent, while the AI was involved in the inventing process (without a human inventor’s input), this could violate the human inventor’s oath that they were the true (and only) inventors.

One way to solve this, is to list those who created the original systems as inventors. But once such considerations are given, the line gets even blurrier, as we’ve seen in Thaler’s case with the DABUS machine. For example, if a new medical or pharmaceutical discovery were to be made using an AI system that independently analyzed tens of thousands of drug formulations to find new unique compounds, should the AI programmers be credited as inventors? Or should medical experts who provide the AI machine with data be deemed the inventors? 

Are there any benefits to allowing AI to be listed as inventors in patent applications?

Thaler’s lawyer, Ryan Abbott, argues that allowing AI inventorship would incentivize innovation, as solving issues surrounding patent inventorship for AI-developed inventions could boost further development of AI, and its use for general discoveries and inventions. He argues that humans should be listed as inventors only in 3 cases:

  1. If a person formulates a problem in a manner that requires inventive skills and instructs the AI to solve that problem. 
  2. If a programmer specifically designs an AI to solve a specific problem, and skillfully selects training for the AI to be able to solve it.
  3. A person who recognizes the output of the AI when it suggests many options and the person uses inventive skill to choose an optimal solution. 

However, Abbott claims, a person working on an obvious problem, a programmer who contributes to the AI’s general problem-solving capability but has no knowledge of the specific problem the AI is solving or its output, or a person who uses a straightforward and obvious AI output, should all not be listed as inventors. He argues that “listing an AI as an inventor is not a matter of providing rights to machines, but it would protect the moral rights of traditional human inventors and the integrity of the patent system.”

While laws that require a human to be listed as an inventor have, for many years, protected individuals working in corporations and ensured they would at least receive due credit for their work, these laws were not designed to take into account the possibility of novel inventions that could be developed by machines. Australian law recognized this already, with its legal framework allowing for AI inventors. Given the pace of development in AI systems in the 21st century, it could be time to clarify what it means to be “an inventor.”

References

Afshar, Mimi S. “Artificial Intelligence and Inventorship-Does the Patent Inventor Have to Be Human?” Hastings Sci. & Tech. LJ 13 (2022): 55–55.

Farre-Mensa, Joan, Deepak Hegde, and Alexander Ljungqvist. “The Bright Side of Patents,” 2016.

Fraser, Erica. “Computers as Inventors-Legal and Policy Implications of Artificial Intelligence on Patent Law.” SCRIPTed 13 (2016): 305–305.

Frumkin, Maximilian. “Early History of Patents for Invention.” Transactions of the Newcomen Society 26, no. 1 (1947): 47-56-47–56.

Gattari, Patrick G. “Determining Inventorship for US Patent Applications.” Intellectual Property & Technology Law Journal 17, no. 5 (2005): 16-19-16–19.

Li, Nick, and Tzeyi Koay. “Artificial Intelligence and Inventorship: An Australian Perspective.” Journal of Intellectual Property Law & Practice 15, no. 5 (2020): 399-404-399–404.

Maurer, Erik S. “An Economic Justification for a Broad Interpretation of Patentable Subject Matter.” Nw. UL Rev. 95 (2000): 1057–1057.

Tull, Susan Y., and Paula E. Miller. “Patenting Artificial Intelligence: Issues of Obviousness, Inventorship, and Patent Eligibility.” RAIL 1 (2018): 313–313.

 

For media enquiries, please contact Nina Rafeek, Marketing + Communications Specialist at the Brookfield Institute for Innovation + Entrepreneurship.

Ibrahim Abuallail
Research Assistant
Nina Rafeek
Marketing + Communications Specialist
September 19, 2022
Print Page

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