Patent Law & Artificial Intelligence: Issues in a Post-Thaler World
Artificial intelligence (“AI”) is a broad term that refers to the “ability of a digital computer or computer-controlled robot to perform tasks commonly associated with intelligent beings.”[1] The origins of AI can be traced back to the early 1950s.[2] In this era, Alan Turing and others first began to speculate about the possibility of creating machines that “think.”[3] Later, in the AI boom of the 1980s, machine learning techniques were developed that allowed computer systems to learn from experience.[4] However, these early AI systems were limited by the lower level of computational power available at the time.[5]
Starting in the 1990s, this fundamental limit dissipated because Moore’s Law enabled computer storage and processing speed to grow at astounding rates.[6] Modern day AI systems are based on algorithms that build an elaborate model from a set of sample or training data.[7] The algorithm breaks down the data into miniscule electronic signals and tries to identify hidden insights or patterns.[8] If given sufficient data, an AI system can make predictions or decisions without being explicitly programmed to do so.[9]
In August 2022, the Federal Circuit decided a groundbreaking case concerning the intersection of patent law and AI.[10] The case arose when Dr. Stephen Thaler sought patent protection for two inventions that his AI system, called the Device for the Autonomous Bootstrapping of Unified Science (“DABUS”), invented.[11] The main issue in Thaler v. Vidal was whether an AI system can qualify as an “inventor” under the Patent Act.[12] The Federal Circuit, as well as the USPTO and district court for the Eastern District of Virginia, concluded that an AI cannot.[13] The court’s decision hinged on the Patent Act defining an inventor as an “individual”[14] and the court interpreting individual to mean a “natural person” or “human being.”[15]
Though the Federal Circuit’s statutory interpretation was straightforward and reasonable, this decision will likely create various issues in patent law. First, how should an inventor approach using AI as a tool to aid them in the inventive process? The Federal Circuit explicitly stated that they are not presented with the question whether inventions made by humans with the assistance of AI are patent eligible.[16] Thus, inventors face significant uncertainty on how to move forward in these tricky situations.
Second, what should those in control of inventive AI, such as Dr. Thaler, do? Should they claim that they are the true inventor of the underlying invention when the AI in fact was? Surely not, because that would be a false statement, considered perjury under 37 C.F.R. § 1.63.[17] But, if they cannot be the inventor of the AI-generated invention, and the AI system cannot be either, then under the current legal framework, AI-created inventions cannot be protected by patents at all.[18]
This second issue is critical given the prevalence of AI in recent years. AI has emerged as a useful tool in a variety of fields, including healthcare,[19] banking and financial services,[20] transportation,[21] and entertainment.[22] Additionally, experts expect AI to become a major focal point of corporate strategic growth planning going forward.[23] As such, the sweeping impact that AI will have on critical facets of our economy and society over the next decade is inevitable.[24]
However, without patent protection for AI-generated inventions, industries reliant on AI, which is often more effective than human researchers, will suffer.[25] One critical example is drug discovery in the pharmaceutical industry, where AI is an indispensable tool that helps facilitate cheaper, quicker and more effective discovery and development.[26] Though the USPTO has issued guidance on AI inventions in 2020,[27] further steps need to be taken to ensure that the legal framework for patent law in the United States encourages the use of AI systems in the inventive process. If not, other countries may take more direct action while the United States continues to lag behind, further driving out companies reliant on AI and hindering our ability to compete in the international marketplace.
Footnotes
