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USPTO Confirms that Artificial Intelligences Cannot be Inventors Under Current Law

May 08 2020

On April 27, 2020, the USPTO published a decision on a petition filed in relation to a patent application that identified an Artificial Intelligence (AI) named DABUS (“Device for Autonomous Bootstrapping of Unified Sentience”) as an inventor.  The decision confirmed that the patent statutes preclude a broad interpretation that would allow for artificial intelligences to be included as inventors.

 

How Did We Get Here

In July of 2019, a patent application was filed at the USPTO that listed the AI named DABUS as an inventor.  While there have been thousands of patent applications for various AI systems, from machine learning (ML) systems, to neural networks, generative adversarial networks (GANs) and beyond, this is at least one of the first AI systems to be listed as the inventor itself.

 Developed by Stephen Thaler, a well-known expert in the field of AI, DABUS is an implementation of a type of artificial neural network (ANN), where two or more neural networks are used to play against one another in order to improve the outputs of at least one of the neural networks to create something different and new.  DABUS is referred to by Dr. Thaler as a Creativity Machine.

I wrote a more in depth article about this matter, ANNs, DABUS and other neural network types here.

The patent application in question was submitted by a group led by Ryan Abbott, a professor of law and health sciences at the University of Surrey in the United Kingdom.  Dr. Abbott and his team suggest that DABUS, through its processing of the data into a useful invention, contributed to its conception in such a manner that it would be considered an inventor under applicable laws.

The patent application initially received a Notice to File Missing Parts, which noted that the associated Application Data Sheet failed to identify each inventor by his or her legal name.  In response, DABUS’s team filed a petition to void the Notice.  The Petitioner argued that DABUS was “trained with general information in the field of endeavor to independently create the invention,” and that inventorship should not be limited to natural persons.

 

USPTO’s Response

In its response to the petition, the USPTO noted that that the patent statutes consistently refer to inventors as natural persons, and as such, any interpretation that would construe the term “inventor” to cover machines would be precluded.  Written by Robert Bahr, Deputy Commissioner for Patent Examination Policy at the USPTO, the decision references several places in the patent statutes which such referrals to inventors being natural persons can be found:

  • 35 U.S.C. § 101 – “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter…”
  • 35 U.S.C. § 115(b) – “[S]uch individual believes himself or herself to be the original inventor or an original joint inventor…”
  • 35 U.S.C. § 115(h)(1) – “Any person making a statement required under this section…”

The opinion also cited precedent from the Court of Appeals for the Federal Circuit (CAFC), such as Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V.[i], which noted a state could not be an inventor, and Burroughs Wellcome Co. v. Barr Labs, Inc.[ii], which states that “[I]nventors must be natural persons and cannot be corporations or sovereigns.”

Finally, the opinion turns to Title 37 of the Code of Federal Regulations and the Manual of Patent Examining Procedure (MPEP) for additional references of an inventor being a natural person, and terms such as “mental” and “in the mind” that indicate an inventor must be a natural person.

While the USPTO rejected inclusion of DABUS as an inventor on the application, it did not make any statements as to whether DABUS was the actual inventor of the underlying invention, leaving open the possibility for the applicant to identify one or more natural persons as the true inventor.

It should also be noted that similar applications filed by DABUS’s team in the EPO and UK Intellectual Property Office met a similar fate.

 

Conclusion

While the USPTO’s determination on the petition puts to rest for now the question as to whether an AI system can be named as an inventor, a deeper conversation has begun.  Currently, at least in the vast majority of existing AI systems, they are not inventors as we define them for the purpose of patents in the US.  They are advanced tools that assist in the reduction to practice of inventive concepts and inventions themselves.

However, the USPTO and other patent offices around the world have begun to consider the implications of complex AI systems in the future acting as true inventors of these inventions.  Currently, the protectability of intellectual property generated by non-humans has already impacted other areas, such as copyrights.

Luckily, the USPTO has already begun that dialogue.  In fact, On August 27, 2019, the USPTO released a Request for Comments on Patenting Artificial Intelligence on the Federal Register, asking for input on whether current US patent laws need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of an invention.

For now however, patents are relegated to those inventions made by inventors who are natural persons.

[i] 734 F.3d 1315 (Fed. Cir. 2013)

[ii] 40 F.3d 1223 (Fed. Cir. 1994)