ARTIFICIAL INTELLIGENCE: NOT A LEGAL INVENTOR
ARTIFICIAL INTELLIGENCE
Author – Amisha Rathod
On April 22, 2020, the United States Patent and Trademark Office (USPTO) published a decision[1] that rules that Artificial Intelligence (AI) systems cannot be an inventor in a patent. Only “natural persons” currently have the right to get a patent.
This decision came in response to a patent application for an “invention” that was invented by “DABUS”, an AI system created by physicist and AI researcher Stephen Thaler.
Background
On July 29, 2019 a US Patent Application No. 16/524,350 titled “Devices and Methods for Attracting Enhanced Attention” was filed at the USPTO listing a single inventor with the given name “[DABUS]” and the family name “(Invention generated by artificial intelligence).” The application also identified the Applicant and the legal representative of DABUS as the Assignee “Stephen L. Thaler.”
A Notice to File Missing Parts of Non-provisional Application was issued by the USPTO which indicated that the application “does not identify each inventor by his or her legal name.”
A petition was filed by Thaler requesting supervisory review of the Notice, and to vacate the notice for being unwarranted and/or void, without success.
Thaler then filed a second petition on the grounds that inventorship should not be limited to natural persons, and therefore, that naming “DABUS” as the inventor was proper.
Artificial Intelligence to be listed as Inventor: Thaler’s Argument
Thaler in his petition asserted that the invention was generated by DABUS, a “creativity machine” that is programmed as a series of neural networks that have been trained with general information in the field of endeavour to independently create the invention.
He asserted that DABUS was not created to solve any particular problem, and it was not trained on any special data relevant to the instant invention. Instead, it was the machine, not a person, which recognized the novelty and salience of the instant invention.
He contended that inventor-ship should not be limited to natural persons and, therefore, the naming of DABUS as the inventor would be proper.
They also argued that the USPTO had granted patents relating to the DABUS machine and, therefore, implicitly legalized the process by which DABUS arrives at an invention for this patent application.
The USPTO’s Opinion
The United States Patent and Trademark Office (USPTO) relied on its understanding of the patent statutes and the Federal Circuit case law concerning inventorship to require that an inventor must be a natural person.
The decision referred to Title 35 of the United States Code to point out that an “inventor” is defined as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”
It further referred to Title 35 to state “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter … may obtain a patent therefore”. Whoever suggests a natural person. This individual ought to be a natural person because the legislation consistently uses the terms “whoever”, “himself”, or “herself” throughout to refer to an original inventor or an original joint inventor of a claimed invention in the application.
The USPTO also referred to the decisions of the U.S. Federal Circuit, which have also consistently required that an inventor be a natural person. The Federal Circuit noted that “Conception is the touchstone of inventorship, the completion of the mental part of invention.” [1] To perform this mental act, inventors must be natural persons and cannot be corporations or sovereigns.
The USPTO pointed that the discussion of conception as being a “formation in the mind of the inventor” and a “mental act” was equally applicable to machines and indicated that conception – the touchstone of inventorship – must be performed by a natural person, USPTO further stated that the use of terms such as “mental” and “mind” in the Manual of Patent Examining Procedure (MPEP) indicates that conception[2] must be performed by a natural person.
The USPTO also noted that the granting of a patent for an invention that covers a machine does not mean that the patent statutes provide for that machine to be listed as an inventor in another patent application – any more than a patent for a camera allows the camera hold a copyright.
Based on the aforementioned, because the patent application named a machine, “[DABUS] (Invention generated by artificial intelligence),” as the inventor, and because current statutes, case law, and the USPTO regulations and rules limit inventorship to natural persons, the USPTO concluded that Artificial Intelligence system is excluded from being an “inventor” under current U.S. patent law.
Along with the patents submitted to the USPTO, patent applications were also filed with the United Kingdom Intellectual Property Office (UKIPO)[3] and the European Patent Office (EPO)[4].
The UKIPO and EPO have already ruled that DABUS, an Artificial Intelligence system, which was created by AI researcher Stephen Thaler, cannot be listed as an inventor based on similar legal interpretations. Artificial Intelligence can already be seen making major impact in applications that people use every day.
Inventions by AI are likely to increase in the future and there is a legitimate question as to how or whether the patent system should handle such inventions.
The present system does not cater for such inventions and it was never anticipated that it would, but times have changed and technology has moved on.
[1]https://content.govdelivery.com/accounts/USPTO/bulletins/287fdc9#.Xqcts2pR6ZQ.email
[2] Univ. of Utah v. Max-Planck-Gesellschafl zur Forderung der Wissenschaften e.V.,
[3] The MPEP defines “conception” as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.” MPEP 2138.04 (citing Townsendv. Smith, 36 F.2d 292,295 (CCPA 1929))
[4] https://www.ipo.gov.uk/p-challenge-decision-results/o74119.pdf
[5] https://www.epo.org/news-issues/news/2020/20200128.html
