Last week’s announcement that the United States Patent and Trademark Office (USPTO) would seek public comment on artificial intelligence (AI) and inventors raised concerns about how the USPTO considers inventions created or partially created by AI. , indicating that changes may eventually be implemented. machine. The Secretariat is soliciting input on 11 questions, including “How do you use AI systems?” [in the invention process]…is unlike using any other technology tool. ”; whether AI inventions are patentable under current patent law regarding joint inventors. Also, whether changes in laws or regulations need to be made to properly address the contribution of AI to inventions.
After the Federal Register Notice was issued, many readers commented on whether the USPTO was asking the right questions and what the future holds for AI inventors. Here’s what they had to say.
Professor Ryan Abbott
, University of Surrey Law School and Brown Neri Smith & Kern LLP (Representative Steven Thaler)
“I am very encouraged by the questions they are asking and I think they are addressing important issues related to AI-assisted invention and situations where both humans and machines contribute to invention. In light of the continued advances in AI and given the length of time that has passed since the last RFC, they also review examples of AI-generated inventions without direct human conception of the invention. I think it might.”
Arpita Bhattacharya and Frank De Costa
Finnegan
“The PTO’s request for comment is an important next step in determining the legal contours surrounding the protection of AI-based IP. [U.S. Court of Appeals for the Federal Circuit’s] While the CAFC’s Thaler decision establishes a lucid test that articulates the front end of the patent process, many open questions remain, including those raised by the PTO. The PTO’s request for comment appears to recognize Thaler’s limitations in failing to address the many complex issues surrounding the protection of AI IP.
The Thaler case record was such that the court was able to resolve pure legal issues. That’s because the applicant was declared an AI. A more complex question that the court didn’t have to face in this case is whether the level of reliance on AI in the invention process would preclude the claim that humans are inventors.
Some of the questions posed for comment address procedural issues regarding what. can What does the PTO do to address the boundary between human contributions to inventors recorded before the PTO during patent prosecution and what areas the PTO has the power to act? do should do it The PTO will do so in light of feedback received from the public.
George Summerfield
K&L Gates Chicago
“Patent law prohibits the naming of machines even if they are co-inventors of a patent. defined as the collection of individuals who invented or discovered 35 USC § 100(f). As the director recognizes, the usual meaning of “individual” is human.
Apart from this, Section 101 provides that:[w]Where until Inventions or discoveries of new and useful processes, machines, manufactures, or compositions, or new and useful improvements thereof, can be patented. “Anyone” is defined to include “corporations, corporations, associations, corporations, partnerships, societies, corporations, and individuals.” 1 USC § 1. Thus, neither Section 100(f) nor Section 101 contemplate machines as joint inventors.
Machine as co-inventor also conflicts with the inventor oath requirement. look 35 USC §§ 115 & 116. It also conflicts with the frankness obligation contained in 37 CFR § 56.
These provisions are representative only. In other words, allowing a machine to be identified as a co-inventor would require a major overhaul of the statutory provisions relating to patents. “
David Sanker
Morgan Lewis
The USPTO’s Request for Comment on Artificial Intelligence and Inventors is an important step in addressing the issue that AI systems are playing an increasingly important role in the invention process. Requests will almost certainly prompt useful feedback from the public. However, Requests, or future versions of Requests, may be improved in some respects.
First, the focus on policy issues omits some important practical issues. For example, US patents require assignments and declarations, but AI systems cannot sign such documents. Furthermore, focusing solely on the USPTO overlooks the important issue that patent portfolios are global, with patent applications in one country claiming priority over patent applications in others. A serious problem arises when countries do not agree on the inventors of AI.
Second, the USPTO is bound by patent laws and judicial decisions on those laws. Some of the questions posed in the request suggest that the USPTO has more latitude to interpret or make AI law than it actually does.
in blickstein
Eric Horsley, Hanes Boone
Given the critical role AI plays in the invention process, we are pleased that the USPTO is taking a proactive approach in considering whether current law provides adequate protection for AI inventions. Today, AI inventions such as those created by DABUS are highly notorious, but their economic value is negligible. As AI becomes more sophisticated, it has the potential to create or contribute to the creation of inventions of great economic value, especially in areas related to drug discovery, personalized medicine, or chip design. When AI inventions have significant economic value, AI owners and co-inventors are encouraged to innovate and seek protection for their inventions. By asking for comment on the current state of AI technology and questioning whether human co-inventors can obtain patent protection if AI makes significant contributions, the USPTO said the current legal framework is inadequate. Taking action now will give inventors, companies, and AI owners certainty about whether their AI inventions will ultimately be patentable. It is a step towards providing This is also a step towards starting a discussion about a statutory mechanism that could transfer patent ownership of AI inventions to human co-inventors, applicants, or AI owners.
Blair Jacobs
McCool Smith
Earlier this week, the USPTO released a Request for Comment on AI Inventors. As AI technology improves, there is no doubt that advances in machine learning systems will become advanced enough to yield new inventions. It is not difficult to imagine scenarios that develop unpredictable outcomes, methods, or techniques. Supercomputers such as Tesla’s Dojo offer tremendous assistance as they can process large amounts of information and implement changes in real time. Current U.S. law makes it clear that only humans can be named as inventors, but keeping up with the rapid technological advances of AI in the innovation process requires legislative or judicial assistance. It’s becoming more and more apparent that it’s necessary. The USPTO has been investigating the issue of AI inventions since at least 2019 and should be applauded for this new initiative. The PTO will undoubtedly play a key role in encouraging and protecting innovation, including innovation enabled by artificial intelligence (AI), and ensuring continued U.S. leadership in emerging technologies. Given AI’s incredibly broad and potentially useful applicability, there may be no emerging technology more important than AI.
