AI-Assisted Inventions Offer Wiggle Room for US Patent Agency

The US Patent and Trademark Office has an opportunity to use its limited authority to clarify whether patent protection is warranted for inventions created by humans with the assistance of artificial intelligence, attorneys said.

The PTO on Tuesday sought input on a number of questions that deal with the current standards for inventorship. Its request comes as AI plays an increased role in the innovation process, and ongoing litigation continues to challenge who, or what, is entitled to IP rights.

Up until this point, both the patent office and US Copyright Office have remained firm in their stance that inventors and authors must be human. The Federal Circuit affirmed that position last year when it ruled that computer scientist Stephen Thaler’s AI system DABUS couldn’t be granted a patent.

The PTO’s request for comments indicates it may be reconsidering its stance. Although the agency likely doesn’t have the authority to make wholesale changes to its inventorship policy without congressional or US Supreme Court backing, attorney say there is enough wiggle room to make substantive changes such as permitting the use of AI as a tool for applications listing human inventors.

“The Patent Office does not have rulemaking authority here to really determine anything,” said Dennis Crouch, a law professor at the University of Missouri. “But at the same time, the agency does have power on the ground, because it’s choosing whether or not to issue patents, and so on.”

Bound by the Federal Circuit

In its decision about Thaler’s appeal, the US Court of Appeals for the Federal Circuit cited the Patent Act, which requires inventors to be “individuals,” but doesn’t define the term. Thaler sought a broad interpretation that would include his AI system, but the court disagreed, finding that “individuals,” and by association “inventors,” are necessarily human beings.

The patent office can’t overturn the Federal Circuit’s interpretation; only the Supreme Court or Congress has that authority, lawyers said.

The goal of the solicitation, however, may not be to redefine inventorship but rather to collect data and facts on the existing patent system. The PTO previously sought comments on the issue in 2019.

“They’re not reconsidering exactly whether or not artificial intelligence can be named as an inventor on a patent under current law,” said Debevoise & Plimpton LLP partner Henry Lebowitz. “They’re trying to understand what is the nature of inventing that artificial intelligence does.”

“We need to ensure our laws and policies strike the right balance to protect AI-enabled inventions without hindering future innovation,” Director Kathi Vidal told Bloomberg Law in an emailed statement. “This latest request is part of our broader effort to engage the community to foster and promote AI-enabled innovation and get that innovation to impact.”

The request for comments homed in on IP rights related to joint inventions. It noted that the Federal Circuit opinion explicitly didn’t address “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.”

Nevertheless, Lebowitz said, the Federal Circuit’s interpretation could still prevent AI from being a co-inventor on a patent, or inventions created with AI from being protected.

If an individual has to be a human under the Patent Act, he said, it “would indicate that ‘individuals’ should be interpreted to mean ‘humans.’”

Confronting the AI in the Room

“That statute will soon have to change,” Mark Lemley, a Stanford Law professor and of counsel to Lex Lumina LLP, said.

“We are already at a place where AI is engaging in significant inventive activity,” he said. “Under current law, when that happens the PTO and the courts have to pretend that activity was done by a human, or conclude that the invention isn’t patentable at all because it was done by an AI.”

The lack of clarity about whether applications involving AI can be patented has pushed some inventors to omit their use of that technology when they file patent applications.

Ryan Abbott, an attorney at Brown Neri Smith & Khan LLP who is representing Thaler, said that some patent attorneys are advising inventors just to list themselves because “no one would question that disclosure.” But that approach has a downside.

“While the patent office can’t question a person being designated, if a patent was litigated and it turned out that the inventor was not accurate, that is grounds for a patent being invalid or unenforceable,” Abbott said.

The PTO could adopt a policy to permit applications to proceed without naming AI, said Justin McNaughton, an attorney at Cruz-Abrams Siegel LLC. “It would seem to be a weird result.”

Vivek Jayaram, founder of Jayaram law agreed, saying that treating a human as the sole inventor of something they created using AI “seems like the easiest and brightest line.”

Smoothing the path to patenting AI-assisted inventions won’t be the end of the story, American University Washington College of Law professor Christine Farley said, as it will create complications for human inventors and could necessitate broader changes.

“We will have more inventions, so science will progress, but it may mean that there is less space for humans to invent,” said Farley. “Ultimately, we may need to rethink the one-size fits all patent system that we have.”