Why AI Can Be Patented Even Though AI Can’t Be an Inventor on a Patent

Recent decisions from patent offices and courts around the world have made clear that an AI system can’t be named as an inventor on a patent application, even if the AI system was involved in the creation of the invention. This has led some to believe that innovative AI can’t be patented. Yet I and my firm obtain AI patents regularly. How can that be?

Demystifying AI’s Role in Patentability

The simple answer is that an invention created with the use of an AI system can be patented if that invention satisfies all of the legal requirements for patentability, even if the AI system cannot be named as an inventor on the patent application for that invention. As long as one or more humans qualify as inventors, the patent application can go through the patenting process normally.

If that conclusion is so straightforward, then why is there a need for this article?

One reason is that headlines such as “No Patents for AI” and “Court Denies Patent Application for AI-Generated Patent” can understandably lead some to believe that AI-related inventions, especially inventions created with assistance from AI, are entirely excluded from patent protection. What is missing from such headlines, and much of the coverage of this issue, is a more nuanced message that distinguishes between the legal requirements that govern who can be named as an inventor on a patent application and what requirements an invention must satisfy in order to be entitled to patent protection.

Understanding the Misunderstandings: The DABUS Case

Another source of confusion is a lack of detailed understanding of the specific facts that have been involved in the cases that have led patent offices and courts to deny inventorship status to AI systems. All such cases that have received public attention in recent years have stemmed from the inventions that Dr. Stephen Thaler has created using his DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) AI system – or, as he would put it, the inventions that DABUS has created.

In particular, Dr. Thaler has submitted patent applications around the world for a light-emitting device and a beverage container, which he claims were invented autonomously by DABUS. He has named DABUS as the sole inventor on each such patent application.

Decoding the Legal Complexities

These facts are important because Dr. Thaler chose to name only DABUS as the inventor on these patent applications. Although I don’t doubt that he sincerely believes that DABUS is the true and sole inventor of the inventions, it also appears that at least one of his motives for filing these patent applications was to press the legal issue of whether an AI system could lawfully be named as an inventor on a patent.

I point this out because DABUS wasn’t named as the sole inventor on these patent applications as the result of any legal determination (by a patent office, court, or other legal authority) that DABUS was the sole inventor of the inventions in question. In fact, because Dr. Thaler named DABUS as the sole inventor on the patent applications, no patent office or court has evaluated whether any human qualifies as an inventor or co-inventor of any of the inventions claimed in the patent applications. The legal status of any potential human inventors simply has not been at issue in any of the patent applications filed by Dr. Thaler.

This is important because I have seen commentaries on the DABUS case that follow this chain of logic (taking the beverage container as an example):

1. DABUS was named as the sole inventor on a patent application for a beverage container.
2. If a human had been an inventor or co-inventor of the beverage container, then that human would have been named as an inventor on the patent application.
3. Since no human was named, no human was an inventor or co-inventor of the beverage container.
4. Therefore, either DABUS is the sole inventor or there is no inventor of the beverage container.
5. Patent law requires at least one inventor to be named for each patentable invention.
6. If DABUS is not permitted to be named as the sole inventor of the beverage container, or if the beverage container has no inventor, then the beverage container can’t be patented.
7. If the beverage container is innovative but can’t be patented, this will stifle innovation.

Why the DABUS Cases Don’t Imply That AI Can’t Be Patented

The flaw in this logic is at step (2): Dr. Thaler’s choice to name DABUS as the sole inventor of the beverage container doesn’t imply that there isn’t a human (perhaps Dr. Thaler himself) who qualifies as an inventor of the beverage container. In other words, Dr. Thaler’s choice not to name a human as an inventor doesn’t imply that patent law wouldn’t permit any human to be named as an inventor of the beverage container. That question simply hasn’t been raised, and therefore hasn’t been answered, in any of the DABUS legal proceedings, precisely because Dr. Thaler chose to name DABUS as the sole inventor and has only been interested in pressing the legal issue of DABUS’ sole and autonomous inventorship.

Is a human an inventor of the beverage container? Or did a human, such as Dr. Thaler, co-invent the beverage container with DABUS? We simply have no way of knowing the answers to those questions based on the DABUS legal cases because the facts of those cases don’t raise those questions, which therefore have not been answered by any legal authority.

And yet I’ve been finding that many people who have learned of the DABUS patent applications from press reports have come away believing that AI-related inventions can’t be patented at all. That is unfortunate not only because it isn’t true but because I suspect that there are inventors and companies who are developing AI-related inventions and who are not pursuing patent protection for those inventions out of a mistaken belief that such inventions can’t be patented.

Yet such inventions can be patented so long as they have at least one human inventor and so long as they satisfy all of the legal requirements for patentability. Despite the press reports that imply that AI has led to a tidal wave of inventions for which there is no human inventor, I file patent applications for AI-related inventions routinely, and I’ve never had any difficulty identifying one or more human inventors who satisfy the legal requirements for inventorship. At least for now, the fear of “inventorless inventions” that are created by AI alone is a red herring that makes great headlines but doesn’t jibe with the reality on the ground.

Types of AI Inventions that Can Be Patented

To be more specific, there are three broad categories of AI-related inventions that can be patented:

• Inventions that improve on AI technology, such as new algorithms for training models.
• Inventions that incorporate AI, such as software that uses a trained model to perform a useful function.
• Inventions created with the assistance of AI, such as a drug having a chemical structure that was discovered using a process that leveraged AI.

Such inventions can be patented as long as they are new, useful, and nonobvious – the three primary requirements for patentability. Of course there must also be one or more human inventors, but in my experience, such human inventorship always is to be found.

Encouraging AI Innovation in Patenting

It’s unfortunate that the DABUS cases, which raise many interesting issues related to the role of AI in innovation, have created so much counterproductive confusion. I am particularly concerned about the misconception that the inability to name an AI system as an inventor on a patent application implies that AI-related inventions can’t be patented because that misconception may lead AI innovators to forgo valuable patent protection for their inventions. I hope that by clarifying the critical distinction between inventorship and patentability I have put to rest the idea that AI innovations can’t be patented. Not only can they be patented, but I encourage anyone who is innovating in the field of AI to strongly consider patent protection for their inventions because of the significant benefits that patent protection can provide. I and my firm, Blueshift IP, specialize in obtaining patent protection for software and AI inventions, so feel free to reach out to me directly for a conversation if you’re using AI in your technology development and want to explore options for protecting your latest AI-based innovations.