AI Use Risks Drop in New Patents as Ideas Are Rendered ‘Obvious’

Artificial intelligence has the potential to render some innovations too obvious to be granted patents, creating roadblocks for inventors using the technology to receive economically vital protections, some intellectual property attorneys say.

The rapid rise in AI use has led to a boom in patent applications for inventions created with help from the technology, according to attorneys and statistics from the US Patent and Trademark Office. Those AI-assisted inventions raise questions about current eligibility requirements for patent protection and the significant economic boost the protections yield.

US law grants the legal monopoly of a patent only for significant advances in technology, denying it for inventions that are “obvious” to someone with ordinary skill in the field where they would be used. An increase in AI-generated invention could lead to higher standards for patentability at the PTO, attorneys say, making it more challenging for inventors to win patent protections.

In cases where a human-created invention could also be created by AI, some attorneys say a patent shouldn’t be granted because anyone with ordinary skill in the technology would be able to arrive at the same idea.

“The point of the obviousness doctrine in patent law is to make sure patents are only granted for the truly innovative,” said Robin Feldman, a professor at UC Law, San Francisco. “If you can get an answer by sticking a query into ChatGPT, that may not be truly innovative.”

Increase in ‘Obvious’ Innovations

Inventors hoping to receive protections for their innovations apply to the PTO, which reviews the application against statutory and agency criteria and decides if it should issue a patent. The basic premise of the patent system is that a “special monopoly” is given only to ideas that are “truly novel and non-obvious,” Colleen Chien, a law professor at Santa Clara University, said.

“It can’t just be the garden variety innovation,” she said. “What AI has done—and generative AI in particular is getting a lot of attention—is to make what has historically been more novel something that is now more routine.”

A blog post by PTO Director Kathi Vidal earlier this year acknowledged the growing role of AI in innovation. She said 80,000 utility patent applications in 2020 involved artificial intelligence, a 150% jump from two decades ago. AI appears in 18% of all utility patent applications and in more than half of the types of technology the office examines, she said.

The office sought public comments on AI’s role in invention and the agency’s handling of AI inventorship questions.

In June, the Senate Judiciary Subcommittee on Intellectual Property held a hearing to discuss whether existing patent law can accommodate AI-generated inventions, or if there is a need for Congress to change the rules. Earlier this year, the Supreme Court declined to hear an case brought by inventor Stephen Thaler, who challenged the PTO’s rejections of his patent applications because they listed his “creativity machine” DABUS as the creator.

Even if AI can’t be an inventor, Chien said, the technology can create “prior art” that ends up becoming grounds to dismiss an inventor’s patent application for something an AI generator has already conceived.

Higher Standards

Obviousness is likely the most common rejection during the PTO’s patent examination process, according to Joshua Landau, senior counsel of innovation policy at the Computer & Communications Industry Association.

An obviousness rejection is generally issued if an “examiner contends that a person having ordinary skill in the art would find it obvious to combine two or more references to arrive at the claimed idea,” said Matthew Carey, a partner at Marshall, Gerstein & Borun LLP. He said AI could alter that analysis.

“It may raise that standard to allow the patent office to say it would be obvious to combine these references where, currently, it may not be obvious to combine certain references to arrive at a claim combination,” Carey said.

Feldman said it “could make it easier for patent office employees to weed out applications that are no more than obvious combinations of existing technology from the truly innovative”.

The PTO declined to comment for this story.

Higher standards should be expected as technology progresses, some attorneys said.

“I think that as time goes on, more things become obvious,” said Landau. “That’s just the reality.”

“As the universe of prior art becomes bigger, as tools that engineers can use become better, there’s more that’s going to be obvious that wouldn’t have been obvious 20 or 50 years ago, and that reflects the advance of knowledge” he said.

“It’s just the ordinary progress of the useful arts, which is exactly what we’re trying to encourage.”