{"id":1025,"date":"2024-04-09T11:00:27","date_gmt":"2024-04-09T19:00:27","guid":{"rendered":"https:\/\/tbillicklaw.com\/?p=1025"},"modified":"2024-09-03T13:11:12","modified_gmt":"2024-09-03T21:11:12","slug":"challenges-to-patenting-ai","status":"publish","type":"post","link":"https:\/\/tbillicklaw.com\/challenges-to-patenting-ai\/","title":{"rendered":"Challenges to Patenting AI-Generated Inventions"},"content":{"rendered":"\n

Challenges to Patenting AI-Generated Inventions<\/strong><\/p>\n\n\n\n

With the recent improvements in Artificial Intelligence (AI) technology, the U.S. Patent and Trademark Office (USPTO) has seen an increase in patent applications for AI-assisted inventions. [1]<\/a>AI helps human inventors gather data, collate it faster, and evaluate outcomes more effectively. At the same time, AI-assistance has created unique issues in patenting inventions that the patent design office has never encountered before.<\/p>\n\n\n\n

What is Needed to Patent an Invention<\/strong><\/p>\n\n\n\n

There are three basic types of patents, utility, design, and plant. Design patents are for anything that changes the external appearance of an item, the ornamentation or configuration. Plant patents are for new plants, seeds, or hybrids. Everything else gets a utility patent. A new process, machine, medication, or an improvement to an existing item, goes in the utility basket.<\/p>\n\n\n\n

The USPTO has four conditions[2]<\/a> inventors must meet to obtain a patent for their creation:<\/p>\n\n\n\n

    \n
  1. It must be \u201cable to be used.\u201d That is, it must exist and not be theoretical or merely an idea.<\/li>\n\n\n\n
  2. The inventor must have a clear description of how to make and use the invention.<\/li>\n\n\n\n
  3. It must be \u201cnovel,\u201d that is, new and never done before.<\/li>\n\n\n\n
  4. It must not be \u201cobvious,\u201d or something anyone could have produced<\/li>\n<\/ol>\n\n\n\n

    A fifth requirement is that the inventor or owner must be the one applying for the patent. Joint inventors or corporations who facilitated the invention may apply, but unless the inventor assigned the patent to a third party, nobody else can apply for a patent.<\/p>\n\n\n\n

    Problem One: Inventorship<\/strong><\/p>\n\n\n\n

    On April 22, 2020, the USTPO denied a petition to include an AI system (the Device for the Autonomous Bootstrapping of Unified Sentience or DABUS)[3]<\/a> as a co-inventor on two patent applications. The decision was upheld on appeal. The Federal Circuit Court held that the Patent Act (35 U.S.C 100(f))[4]<\/a> states that patents must be given to \u201cindividuals\u201d and that other U.S. Supreme Court rulings affirm that \u201cindividuals\u201d are \u201cnatural persons.\u201d Hence, an AI cannot be granted a patent.[5]<\/a><\/p>\n\n\n\n

    When AI continued to develop, issues of U.S. security came to the forefront. In response to President Joe Biden\u2019s Executive Order on the Safe, Secure and Trustworthy Development and Use of Artificial Intelligence (October 30, 2023), the USPTO has issued and requested guidance documents on how AI-assisted and AI-generated inventions should be treated for purposes of patents. As of this writing, numerous agencies are involved in the attempt to define who and what should be given credit for an invention.<\/p>\n\n\n\n

    One agency, the Center for Strategic & International Studies (CSIS)[6]<\/a> has published the results from a workshop that they summarize as:<\/p>\n\n\n\n