Can Bing, ChaGPT or Gemini be your Inventors / Co-inventors ?
Feb 14,2024. Reading time ~ 8 minutes
No, only a human can be an inventor? for the purpose of patenting in the United States.
A solo human inventor cannot claim sole credit for an invention if an AI system assisted with that invention, and the human was not substantively involved in the conception or development of the inventive concept.
The inventors of a patent are? "the individual(s)? who invented or discovered the subject matter of the invention. It is the inventor that conceives of the invention. ....[Conception] is the touchstone of inventorship, the completion of the mental part of invention.... It is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention......[Conception] is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. [Conception] is a mental act.... To perform this mental act, inventors must be natural persons and cannot be corporations or sovereigns or machines...
As AI's role in science, data analysis, and discovery grows, distinguishing human from machine contributions becomes challenging. Yet, despite AI's idea generation, it lacks the intent and comprehension true invention requires—a process rooted in human thought, understanding, and problem-solving.
Widespread use of artificial intelligence (“AI”), including the use of AI to discover, design, and invent other inventions, raises important and interesting questions on patentability of AI and Generative AI-based inventions submitted for patenting to the United States Patent and Trademark Office (“USPTO”).? In the wake of the widespread use of artificial intelligence (“AI”), several questions are raised. On February 13, 2024, the USPTO issued guidance on the patentability of AI-assisted inventions. This article focusses on patentability questions surrounding AI driven or AI assisted inventions.
Key? takeaways from this historic USPTO guidance.?
USPTO is inviting public comments on the guidance before May 13, 2024
Key United States (US) statutory provisions and US case laws that AI inventors could keep in mind before filing patent, contesting patents, or seeking legal IP consultation in the US.
35 U.S.C. § 101 : Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.
35 U.S.C. § 100(f) : The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.( courts clarify that “individual” is always a human)
35 U.S.C. § 115(a) : An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
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35 U.S.C. § 116(a) : Joint inventions. When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
Thaler v. Vidal, 143 S. Ct. 1783 (2023)
In a landmark 2023 decision, the Supreme Court of the US tackled the contentious question of AI inventorship. Dr. Thaler argued that his AI should be recognized as an inventor but the court clarified that an AI agent cannot be an inventor.?Dr. Stephen Thaler, Ph.D., a Physicist developed an AI systems that use ML? to develop new concepts, products, and processes. Using neural networks, his AI system generates inventive outputs without human direction or guidance.?
One of the system ? developed by Stephen was called the Creativity Machine, which contained two neural networks; the first was trained with data from a particular knowledge area, and then generated novel ideas based on altering that data ( as per court records), while a second measured the novelty, utility, and value of the resulting ideas to identify which to pursue further. That system evolved to become DABUS, an acronym for "Device for the Autonomous Bootstrapping of Unified Sentience."? The DABUS system includes a larger number of neural networks, each of which represents an individual concept such as "temperature," or a positive outcome like "enjoyment" or "survival.??
DABUS ( the AI system)? developed two novel concepts. First, it generated the Neural Flame, an emergency light beacon that flashes in a specific pattern to attract the attention of rescuers and, thus, helps its users survive. DABUS also generated the Fractal Container, a beverage container that improves grip function and promotes heat transfer to increase the user's enjoyment. Stephen? listed DABUS as the inventor in the patent applications for the two inventions: the Neural Flame and the Fractal Container. USPTO denied the? patent application? on the basis that the inventor, an? AI system was not a? human being. The district and Appeals court held that under the Patent Act,? "inventor" must be human. The US? Supreme Court refused to hear the matter.?
Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998)
A case decided 25 years prior to drafting this article. While there was no AI involved in this case, this case clarifies controversies surrounding joint inventorship.
Ophthalmologist, Dr. Jaswant S. Pannu conceived the idea of? an eye lens, an? intraocular lens designed to reduce snagging on eye tissue during insertion. The lens was originally and initially conceptualized by Pannu, who later met with Dr. William Link, suggesting the lens could be made from a single piece of plastic, leading to the creation of prototype lenses by Heyer-Schulte, Link's company. Pannu filed a patent application, which was later issued, listing himself as the sole inventor.
The controversy arose when IOLAB argued that the patent was invalid due to improper inventorship, claiming that Dr. Link should have been listed as a co-inventor because he contributed to the idea of making the lens. The? Court? granted Pannu's motion for judgment as a matter of law that IOLAB could not invalidate the patent on the ground of improper inventorship. However,? Appeals Court ?held that if non-joinder of an actual inventor is proved by clear and convincing evidence, the patent is rendered invalid unless inventorship can be corrected under 35 U.S.C. § 256.
The case? highlights? the importance of accurately identifying all individuals who contributed to the conception of the patented invention. The decision underscores the complexities involved in determining inventorship, especially in collaborative invention scenarios—an AI agent, Bot or neural network cannot be a co-inventor even if a Generative AI could technically invent a lens design which may very well be possible in the current AI era that we find ourselves in.
Ethics in AI Inventions and AI driven inventions
While this article focuses on AI driven inventions, it may be worth exploring ethical and practical implications of AI in the invention process. Similar to "DABUS", AI could potentially be used to discover, "manufacture novelty at scale" from a neural network without actually having a human conceptualize. Further, another AI could then be developed and employed to reverse-engineer patent law procedural requirements using say computational law which may be explainable/provable resulting in creating picture perfect/ indisputable patent applications.
I leave it to the reader to ponder - what are the potential impact on innovation and the future of AI development - AI on AI. Is an Intellectual Property chaos imminent ? or will we see a rise in novel and helpful inventions ? How should USPTO examine "toucheless invention" applications where no human conceived the novelty but human stake claims? A well crafted natural language "prompt" is all that takes now for machines to suggest novelty in natural language. If machines can conceptualize novelty, - what is the human providing then towards invention?