Patenting and Protecting Artificial Intelligence in the United States
Advancements in Artificial Intelligence (AI) have been occurring at an ever-increasing rate, impacting almost every field of technology, from medical diagnosis and analysis, to driverless cars, to automated securities trading platforms, all the way to home security[i]. The arms of AI can be felt in every industry, in one way or another. Given the speed of advancement and the very nature of AI itself, it is important to consider the complex landscape around how to protect improvements in the AI space.
At first, it is important to note the types of intellectual property (IP) protection that can apply to inventions in the AI space. The definition of IP generally comprises the core four – patents, copyrights, trademarks and trade secrets. In the case of AI, each of these may apply, and each has its own particular usefulness and advantages. Further, each of these types of IP has its own concerns with respect to the timing of obtaining the protection. For this article, we will primarily be focusing on the two areas of protection that generally are of the most concern – patents and copyrights.
AI, in almost all cases, exists as a software component. Depending on what the use case for the AI is, there may also be a hardware component (e.g., vision system, sensors, actuators), but these hardware components are generally peripheral to the core AI, which is software based. While AI inventions based in combined software and hardware solutions or standalone software-based solutions may both be patentable, the analysis for whether an AI-based system constitutes patent eligible subject matter does take into consideration what is actually involved.
Where there is a corresponding hardware component in use with the software-based AI component, the subject matter eligibility analysis is usually relatively simple, favoring eligibility over not. For instance, if an AI system is used to automatically control a series of vision systems (e.g., security cameras) and detect intruders, the invention is likely eligible for patent protection from a subject matter perspective, assuming the application is drafted appropriately.
Where the AI system solely exists as a software solution, an examiner at the USPTO will likely give the invention more scrutiny under the subject matter eligibility tests. We have written more on the patentability of software-based inventions in a separate article that you can find here. However, while patent applications directed to software only inventions may receive additional scrutiny, true AI inventions likely are sufficient to overcome these rejections. In fact, USPTO Director Andrei Iancu has even discussed the patentability of AI, through discussions of “[H]uman-made algorithms”, during a hearing regarding the oversight of the USPTO in April of 2018. Again, the critical point in securing a patent in a solely software based AI invention is appropriate drafting of the application.
With respect to patenting AI based inventions, particularly as it relates to the software component of the AI, it is important to note that a utility patent covers the functionality of the software, through defining the software in terms of systems and methods. What patents do not cover is the actual code. Source code is covered largely by copyright, which can protect direct copying of the code, but not those who write their own code to perform the same functionality.
In defining what an inventor wants to protect with respect to their software-based AI invention, it is important to look at the invention in terms of a method, or a series of steps. Considering everything the computer does is generally a series of steps involving processing some data, framing the inventive aspects of the software-based AI invention in such a methodological manner is generally straightforward.
What inventors want to avoid is viewing the invention in the abstract, or very high-level depiction. For instance, you cannot get a patent on the idea of “an AI based dating platform”, but you could potentially get a patent on the methods performed by the AI in order to find compatible matches (e.g., based on training models and predictive analytics). So, a focus needs to be on what actual occurs in order to make the invention possible, not solely focusing on a conclusory statement about what problem is being solved.
Another important thing to remember when seeking patent protection for AI inventions, or any invention, is to do so sooner rather than later. There are two main drivers for this. First, the USPTO, and most if not all other national patent offices are “first-to-file” for priority on inventions. What this means is that, even if you get to the market first with your invention, or conceived of the idea before another inventor, if another party’s application gets to the patent office before yours, then the patent rights will be theirs, and you will be prevented from getting a patent on the invention.
The second reason is that your ability to get a patent on an invention, even without worrying about what others are doing, can be jeopardized if you offer for sale or otherwise disclose your invention publicly before filing. The USPTO gives you one year from making a public disclosure of the invention to file your patent application. However, the rest of the world is not so nice, with many jurisdictions making it a bar on patentability if you publicly disclose your invention prior to filing a patent application in at least one jurisdiction first.
With respect to copyrighting all or portions of an invention based in AI, there are certain aspects of these inventions which are protectable and those which are not. Copyrights cover artistic works, which includes everything from literary works, to graphical/visual works (e.g., paintings, movies, photographs), to musical works and even choreographed dances.
When considering copyrighting portions of an AI based invention, the focus is generally on copyrighting the source code. Source code is considered a literary work for the purposes of copyrights, and inventors can receive a federal copyright registration in the uncompiled source code.
What is protected by a copyright registration on source code is the copying of the actual code. It does not prevent others from creating code of their own that performs the same functions. However, it does restrict the copying of subsets of the whole code, such as the copying of a module, or a series of functions.
One issue when considering copyrighting source code is how frequently the source code is updated. Rarely is there a piece of software that is static for very long. Updates in source code, while they may be considered derivative works of the originally copyrighted code, may not be independently covered by the initial registration. Inventors should consider at what point they want to secure additional copyrights on later versions of a software-based invention.
It is important to note that while a copyright registration can be done at any time, as the works form in the author upon creation, statutory damages and attorneys fees are generally only available if the copyright registration is filed within 3-months of publication of the work[ii]. Filing your registration after that point will limit damages to “actual damages” (e.g., lost profit), which can be harder to prove.
Separately, more and more we see the question about whether it is possible to copyright the output of AI. Recently there have been numerous instances of AI generating their own artistic works, such as The Next Rembrandt and Bayou. The law is currently unsettled as to whether these works would be copyrightable. For instance, in April of 2018, the Court of Appeals for the Ninth Circuit held that the Copyright Act only provides standing to humans[iii]. The case, involving copyrights associated with a Monkey Selfie, but the same findings would presumably extend to works authored by AI.
Of course, numerous scholarly and legal minds believe that works would be derivative works of the individuals who wrote the code for the AI, and as such those individuals would be the rightful owners of works generated by the AI. We ultimately will have to wait to see how this plays out in the future.
Overall, it is important to understand and analyze what aspects of an AI based invention can be secured early on in the process. Timing is crucial for both patents and copyrights with respect to being able to secure the rights and receiving the greatest protection available under the laws. This area of technology is moving quickly, so delay and lack of planning can be devastating. Devoting at least some time to do the analysis may help with providing a roadmap for how and when to protect various aspects of your AI based invention so that you reap the greatest rewards possible.