Practical Tips for Securing Patent Rights for AI-Generated Inventions

From Siri to self-driving cars to computer-assisted drug discovery, AI is progressing rapidly, and it has provided competitive intelligence for solving some of the world's greatest challenges. As AI systems advance, they have also started emerging as independent developers of better cars, drugs, personalized products and various research tools. Specifically, AI systems can evolve over time to autonomously contribute to the conception and development of an idea outside of their creator's expertise or original intent. For example, a drug designed and discovered solely by AI systems, without any human interaction, is about to enter clinical human trials for the treatment of obsessive-compulsive disorder. See, Rachel England, "AI-Formulated medicine to be tested on humans for the first time," Engadget (2020). Similarly, AI systems have independently developed new artificial computer languages that are more efficient in performing the assigned tasks (e.g., translation), eschewing human languages. See, Sam Wong, "Google Translate AI Invents its own language to translate with new scientist" (2016). The role of AI as a creator of new inventions again brings to attention the controversy surrounding ownership and inventorship rights relating to patents filed to protect such AI-generated inventions. It is particularly important to address these issues because key components of an AI system — datasets and ever-evolving AI algorithms — often do not qualify for patent protection, leaving only the output of the AI system as a potentially patent eligible invention.

Earlier this year, the European Patent Office and the UK Intellectual Property Office rejected two patent applications in which an AI system (DABUS) was named as the inventor. Both patent offices considered the inventions themselves worthy of patents, but rejected the applications because the "inventor" was not a human. While the definition of an inventor may differ slightly, most patent offices and courts around the globe interpret the term "inventor" to refer to human beings. While this traditional paradigm easily conforms to the typical scenario when AI is a tool that helps human inventors by, for example, creating models for decision making in self-driving cars or discovering new drugs, it creates a grey area when an AI system is fully responsible for the invention without human involvement. The U.S. Patent and Trademark Office (USPTO) recognizes this conundrum, and sought public opinion on whether current patent laws and regulations regarding inventorship need to be revised to account for situations when a non-human entity qualifies as an inventor. (See, "Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation," 84 Fed. Reg. 210 (Oct. 30, 2019)).