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Artificial intelligence (AI) does a lot, and now its champions are asking governments to recognize it as a 21st-century inventor and author with intellectual property (IP) protection rights.
Next month, the United Kingdom’s Supreme Court is set to consider the issue of whether AI can be indicated as an inventor on a patent application, in the case of physicist Stephen Thaler and his Creativity Machine, his lead attorney, Ryan Abbott, told EE Times. A request for the U.S. Supreme Court to take a separate case on the same issue is pending, he added.
AI-as-inventor of a patentable creation is the issue in a worldwide effort by Abbott and a team of lawyers in the Artificial Inventor Project (AIP).
“AIP … is intended to promote dialogue about the social, economic, and legal impact of frontier technologies, such as AI, and to generate stakeholder guidance on the protectability of AI-generated output,” according to the project’s website.
The AI may be creating new works that need IP protection, but there’s one inventor function it can’t fulfill.
In some instances, the inventor can play a compelling role in the government’s review process of a patent application, Pad Alce, founding partner of the AI Patent Law firm, told EE Times. The firm focuses on patent portfolios for startups and high-growth companies.
“If you’ve ever participated in an exam or interview, the most convincing are oftentimes when the inventor is present and able to delineate the distinction between the current invention that we are attempting to prosecute and the prior art of record (a previously patented invention),” he said. “It often can present a compelling story, when the inventor is saying, ‘These are the issues I struggled with when coming up with this invention. And here’s how I came up with the technical solution’.”
For the Creativity Machine’s inventions, project attorneys filed patent applications in 18 jurisdictions around the world on two inventions—neural flame, an emergency beacon, and fractal container, a beverage holder based on fractal geometry—and listed Thaler’s neural network-based Creativity Machine as the inventor, said Abbott, who is a professor of Law and Health Sciences at the University of Surrey School of Law and adjunct assistant professor of Medicine at the David Geffen School of Medicine at University of California, Los Angeles.
The physicist also applied for a copyright on “A Recent Entrance to Paradise,” an art piece generated by the Creativity Machine, and it was denied. Abbott asked a court in January to order the U.S. Copyright Office to reverse its denial, and the government filed paperwork in response asking the court to uphold its position. A decision may not be made until next year.
For the fractal container and neural flame, the U.S. Patent and Trademark Office rejected the application for patents and said an inventor must be a “natural person.” After unsuccessful lower-court appeals, Abbott petitioned the U.S. Supreme Court.
Early next month, he is set to head to London, to argue Thaler’s patent case before the U.K.’s highest court.
To date, the patent applications have only been subject to final, non-appealable outcomes in two jurisdictions: Australia, where the patents have been denied, and South Africa, where the patents have been granted. In Germany, New Zealand and Taiwan, the applications are also in the process of judicial appeals after having been denied by patent offices, according to a summary written by Abbott and attorney Elizabeth Rothman.
In the remaining jurisdictions, the applications either have yet to be examined or have been subject to preliminary rejections by patent offices that are still being internally appealed.
At stake is legal protection for an inventor’s work, safeguards that encourage innovation and assure creators that without their permission their work can’t be taken and used for another’s benefit. This protection for inventors and authors is rooted in the U.S. Constitution.
Abbott pulled an example from the pharmaceutical industry to illustrate his point.
“When COVID hit, they told all their pharmacologists to stop whatever they were working on and go work on COVID,” he said. “In the future, they may go to a room full of supercomputers and computer scientists and say, ‘Have AI sequence this new pathogen, design an antibody to treat it, design clinical trials and formulate it.’ And if AI can automate some or all of that work, that’s something that we really want to encourage.
“If it is that AI can be used to more effectively design new drugs or repurpose existing drugs, you wouldn’t want companies avoiding doing that simply because they need patents and not automating processes that are susceptible to automation. It would make pharmaceutical development less effective.”
Let the data decide
Joe Mutschelknaus, a partner in the law firm Sterne, Kessler, Goldstein & Fox, told EE Times he thinks companies are, for the most part, listing the engineers of AI systems as inventors for the solutions their software is devising.
“As these AI systems have been advancing, for example with the next-generation ChatGPT, they’re getting better and better, and the creative work required of humans is less and less,” he said. “And so there might be a threshold where there is no invention. That’s something that Congress and the courts are going to have to figure out.”
Mutschelknaus sees another way.
“My personal opinion is that maybe there should be some other disclosure requirement of how the invention was made,” he said.
Ben Stasa, a lawyer who specializes in electrical, computer and software patent prosecution at the IP law firm Brooks Kushman P.C., sees a social experiment going on with the Thaler case. He wants to see more data to determine the best course.
“I think it would be interesting to see different courts, different jurisdictions do different things—so that some experimentation can take place to see what type of behaviors and results the laws give in certain jurisdictions,” Stasa said. “What, you know, is the best balance?”
Intellectual exercise becomes real
The relevant U.S. regulators are paying attention to the issue.
Shira Perlmutter, director of the U.S. Copyright Office, told Bloomberg Law that this year her office is focusing on “legal gray areas” about copyright and AI amid increasing concerns that policy is lagging behind the technology.
“When we started looking at it, it was a very interesting intellectual exercise primarily, and now it’s become very real,” she told the legal publication.
The U.S. Patent and Trademark Office has an ongoing AI and Emerging Technologies Partnership series that will soon issue a Request for Comment on AI technologies and inventorship issues, Paul Fucito, USPTO press secretary, told EE Times.
Those comments will reach Fucito’s boss, Kathi Vidal, director of the USPTO, who’s very familiar with AI. She began her career as a systems and software design engineer with General Electric and Lockheed Martin, where she designed one of the first AI systems for aircraft, according to a press release announcing her appointment last April.
