Patents and AI-Generated Works: Should AI Be Designated as Inventors?

by Emmaline Fisher, Associate Member, University of Cincinnati Law Review Vol. 91

I. Introduction

Artificial intelligence (“AI”) is a field that seems to be ever-evolving, and it is focused on the creation of systems that mimic human problem-solving to complete tasks that typically require human intelligence.¹ The system receives information and then performs actions in response.² AI systems typically have at least one of three following skills: the ability to learn, to reason, and to self-correct.³ Certain AI systems have progressed to a point where they are able to generate their own inventions.⁴ As a result, no natural person would qualify as the inventor.⁵ In a recent decision, the Federal Circuit ruled that AI cannot be listed as an inventor on a patent.⁶ This article discusses whether the United States Patent and Trademark Office (“USPTO”) should list AI systems as inventors on patents. Section II provides background on the Federal Circuit’s recent Thaler v. Vidal decision, the responses of foreign patent offices to recent patent applications that list AIs as inventors, the USPTO’s response, and the resolution proposed by the International Association for the Protection of Intellectual Property (“AIPPI”). Section III compares these responses to AI-generated inventions. Finally, Section IV concludes by stating the best approach.

II. Background

A. The Federal Circuit’s Decision on Thaler v. Vidal

Dr. Stephen Thaler, the creator of the AI, Device for the Autonomous Bootstrapping of Unified Science (“DABUS”), pursued patent protection for two inventions that DABUS generated, a Neural Flame and a Fractal Container.⁷ He then listed DABUS as the sole inventor and himself as the assignee.⁸ The USPTO sent him a “Notice to File Missing Parts” stating that since the application lacked a valid inventor, it was therefore incomplete.⁹ Thaler then appealed the issue to the Federal Circuit, which other than the Supreme Court, is the ultimate determiner on matters related to patents.¹⁰

The Federal Circuit concluded that it is only necessary to look at the language of the Patent Act and how it defines “inventor.”¹¹ An inventor is defined under the Patent Act as “the individual, or if joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”¹² The Patent Act does not provide a definition of the word “individual.”¹³ The Federal Circuit ultimately determined that since the Patent Act uses the term “individual” when defining an inventor, and the Supreme Court had determined in an earlier, nonpatent case that the term “individual” refers to natural persons only, an inventor cannot be a nonhuman.¹⁴ The Federal Circuit also refers to the use of the pronouns “himself” and “herself” in the statute as proof that Congress only intended for possible inventors under the Patent Act to be human.¹⁵

B. Other Patent Offices’ Decisions Regarding DABUS as an Inventor

Thaler’s pursuit of having DABUS listed as the sole inventor has also been denied by the United Kingdom Appeals Court, the European Patent Office, the Federal Court of Australia, and the German Federal Patent Court.¹⁶ However, Germany’s Federal Patent Court did allow the inventor to be designated as “Stephen L. Thaler, PhD who prompted the artificial intelligence DABUS to create the invention.”¹⁷ DABUS is not considered to be the inventor, but it is still mentioned in the inventor designation.¹⁸ The German Federal Patent Court was essentially stating that the inventor could provide additional information on the form; Thaler was not prohibited from providing information about the AI’s contribution.¹⁹ The court held the following: that DABUS could not be designated as the inventor, that Thaler must list an inventor on the application, that he could not add C/O Thaler to the designation, and that he could not amend the description to say that DABUS created the invention.²⁰

The South African Patent Office granted the patent with DABUS listed as an inventor.²¹ This is likely only because South Africa is a non-examining country.²² As long as a patent application meets the formal requirements, a patent is granted.²³ In South Africa, a granted patent can be rendered invalid when it is challenged by a third party.²⁴

C. The Response of the AIPPI to AI-Generated Inventions

In 2020, the International Association for the Protection of Intellectual Property (“AIPPI”), the oldest global organization concerned with the protection of intellectual property, agreed upon a resolution that suggests a way to handle AI inventors, like DABUS.²⁵ In this resolution AIPPI indicates that there needs to be an international consensus regarding whether AI can be considered inventors.²⁶ Inventions should still be patent-eligible regardless of whether they are generated by AI.²⁷ However, AIPPI’s resolution states that AI should not be considered or named as an inventor, even if a natural person has not put forth any contribution whatsoever.²⁸ The inventions made by AI should not be excluded from receiving a patent, regardless of the fact that there is no human being (natural person) who contributed enough to be considered an inventor, as long as the applicant is a natural or legal person.²⁹

III. Discussion

The approach taken by the German Federal Patent Court, which is similar to that suggested by AIPPI, is the most practical.³⁰ It allows for patent protection of AI-generated work, thus encouraging innovation.³¹ Germany’s approach allowed for Dr. Thaler to still give credit to DABUS, while listing Dr. Thaler as the inventor.³²

The USPTO’s approach is very narrow and textualist.³³ It fails to further the goal of the Patent Act, which is to encourage innovation and the creation of novel, unobvious, and useful inventions.³⁴ The Thaler opinion relies on the definition of the term “individual” in a nonpatent case that had nothing to do with AI.³⁵ By not allowing AI-generated inventions to be created, the USPTO may discourage innovation in the creation of inventive AI.³⁶ Additionally, failing to allow patent protection for AI-generated inventions may result in businesses actually avoiding the use of AI to invent, even when it is actually more efficient to use AI, thus slowing progress.³⁷ Those who argue that the AI should be credited as the sole inventor state that it’s unfair to allow someone who simply prompted the AI to take credit for work that they have not accomplished and it devalues human inventorship.³⁸ However, by taking the approach allowed by the German Federal Patent Court, both the person who thought of the prompt and the AI receive credit for the invention.³⁹

IV. Conclusion

As AI systems advance in sophistication, it is likely that they will continue to generate inventions. The USPTO’s current approach to AI-generated inventions discourages innovation and the use of AI in the inventive process. By adopting the approach suggested by AIPPI and the German Federal Patent Court, both the natural person who provided the prompt and the AI system would receive recognition. Ultimately, this approach will encourage the main goal of the United States patent system, which is innovation.

Cover Photo by Many Wonderful Artists on Flickr

Emmaline Fisher

Emmaline Fisher graduated from Georgia Tech with a degree in Chemical Engineering, and after working for a bit, she decided to go to law school to pursue a career in intellectual property law. When she has free time, she enjoys spending it outdoors with her dog, Penny.

References

1
Dustin Harris, Artificial Intelligence. What is Artificial Intelligence (AI)? How Does AI Work?, Built In (Sept. 19, 2022), https://builtin.com/artificial-intelligence [https://perma.cc/6WWD-DC8F].
2
Id.
3
Ed Burns, What is Artificial Intelligence (AI)?, TechTarget (Feb. 2022), https://www.techtarget.com/searchenterpriseai/definition/AI-Artificial-Intelligence [https://perma.cc/TM7Q-FUY9].
4
Ryan Abbott, The Artificial Inventor Project, WIPO Magazine (Dec. 2019), https://www.wipo.int/wipo_magazine/en/2019/06/article_0002.html [https://perma.cc/KHE6-FC3F].
5
Id.
6
Samantha Handler, Inventors Must Be Human, Federal Circuit Rules in Blow to AI (1), BL (Aug. 5, 2022, 12:55 PM), https://news.bloomberglaw.com/business-and-practice/only-humans-not-ai-qualify-as-inventors-federal-circuit-rules [https://perma.cc/6GJV-3RCQ].
7
Thaler v. Vidal, 43 F.4th 1207, 1209 (2022).
8
Id.
9
Id. at 1210.
10
Handler, supra note 6.
11
Thaler, 43 F.4th at 1210-11.
12
35 U.S.C. § 100.
13
Id.
14
Handler, supra note 6; Mohamad v. Palestinian Auth., 566 U.S. 449, 455-56 (2012). This case dealt with determining whether an organization can be considered an individual. The Supreme Court held that the term “individual” concerned only natural persons. Therefore, it was found that under the Torture Victim Protection Act, which used the term individual, liability did not extend to organizations, since they are not natural persons. Id.
15
Handler, supra note 6.
16
John Villasenor, Patents and AI Inventions: Recent Court Rulings and Broader Policy Questions, Brookings (Aug. 25, 2022), https://www.brookings.edu/blog/techtank/2022/08/25/patents-and-ai-inventions-recent-court-rulings-and-broader-policy-questions/ [https://perma.cc/73B2-L9WA].
17
James Nurtron, German Decision Could Provide an Answer to AI Inventorship, IPWatchdog (Apr. 20, 2022, 1:15 PM), https://www.ipwatchdog.com/2022/04/20/german-decision-provide-answer-ai-inventorship/id=148555/ [https://perma.cc/6MCX-JE7M].
18
Id.
19
Id.
20
Id.
21
Utkarsh Patil, India: South Africa Grants a Patent with an Artificial Intelligence (AI) System as the Inventor – World’s First!!, Mondaq (Oct. 19, 2021), https://www.mondaq.com/india/patent/1122790/south-africa-grants-a-patent-with-an-artificial-intelligence-ai-system-as-the-inventor-world39s-first [https://perma.cc/8YZ5-W75B].
22
Id.
23
Id.; Patent Filing in South Africa, IIPLA (June 29, 2021), https://iipla.org/ip-knowledge/south-africa/patent-filing-in-south-africa/ [https://perma.cc/JG8H-8J87]. At minimum, a patent application filed in South Africa must have: the country, number and date of the underlying application, the invention’s title, the prescribed fee, and the name and address of the applicants and inventors. Id.
24
Id.
25
Int’l Ass’n for the Prot. of Intell. Prop., Adopted Resolution: Inventorship of Inventions Made Using Artificial Intelligence, Q272-RES-2020 (Oct. 14, 2020).
26
Id.
27
Id.
28
Id.
29
Id.
30
See discussion supra Part II.B and Part II.C.
31
Id.
32
Id.
33
See discussion supra Part II.A.
34
SmithAmundsen LLC, The Purpose Behind Patent Law and What it Means for You, JDSupra (Feb. 20, 2017), https://www.jdsupra.com/legalnews/the-purpose-behind-patent-law-and-what-92379/ [https://perma.cc/Z8LT-XSLV].
35
See discussion supra Part II.A.
36
Abbott, supra note 4.
37
Id.
38
Id.
39
See discussion supra Part II.B and Part II.C.