May 2020: U.S. Patent Office Seeks Public Comments on Patenting Artificial Intelligence Inventions

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Quinn Emanuel Urquhart & Sullivan, LLP

In 2016, a computer program developed by Google’s DeepMind Technologies beat the world’s second-highest ranking professional player at the board game Go. The program, AlphaGo, won four out of five matches against Korean player Lee Sedol in this ancient game that many believed was too complex for computer programs to master. By one estimate, there are more board configurations in Go than there are atoms in the universe. Therefore, a brute force computation of all possible moves would not work. Instead, AlphaGo utilizes an artificial intelligence (AI) algorithm called the “deep neural network” to teach itself how to get better.  

The creativity of the AI revealed itself during AlphaGo’s second match. The computer made a move that contemporaneous commentators characterized as a clear mistake, but which ultimately gave AlphaGo the victory. Afterwards, Lee and other players called the move “beautiful,” “unique,” and “creative.” It is clear that the AlphaGo program reflects innovation both in its creation and in the outcomes it produces—but the question of whether and how that innovation is to be protected by intellectual property rights remains an open one today.  

On August 27, 2019, the United States Patent and Trademark Office (“USPTO”) published a Request for Comments on Patenting Artificial Intelligence Inventions, 84 FR 44889. The Request for Comments broadly defines AI inventions as “[i]nventions that utilize AI, as well as inventions that are developed by AI.” Although the USPTO invited the public to comment on “any issues that they believe are relevant” to the topic, it also listed specific questions of interest, such as:

  • Do current patent laws and regulations regarding inventorship need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of an invention?  
  • Does AI impact the level of a person of ordinary skill in the art? If so, how? For example, should assessment of the level of ordinary skill in the art reflect the capability possessed by AI?  
  • Are there any patent eligibility considerations unique to AI inventions?
  • Are there any new forms of intellectual property protections that are needed for AI inventions, such as data protection?

Comments were due by November 8, 2019, and made available for public inspection on March 18, 2020. The majority of the publicly-available comments conclude that, at least for now, the emergence of AI technology does not justify modifying the limitations of named inventors to natural persons. For example, the American Intellectual Property Law Association (AIPLA) stated that “[o]wnership of patent rights should remain reserved for only natural or juridical persons at this time” at least in part because, for now, “there is not yet enough information available to know whether this is truly ‘inventive AI.’” The AIPLA cautioned however that “if inventive AI does exist in the future, it will be necessary to consider what types of activities by AI entities would be considered as inventive contributions to the claimed invention.”  

In a response submitted by the U.S. chapter of the Institute of Electrical and Electronics Engineers (IEEE-USA), the organization argued that AI is hardly different than other types of “computer-implemented technologies” that have enabled humans to perform tasks more efficiently. Rather than modifying the law to specifically address AI, the IEEE-USA suggested refining existing legal standards that are difficult to apply for AI and non-AI inventions alike such as the law for subject matter eligibility. The IEEE-USA further stated that inventions to which AI may contribute should be attributed to the individuals designing the AI system, specifically, those who “created an AI’s system’s specifications, objectives, and input/output architectures, and who trains the AI system should be named the inventors of any inventive output of the AI system.”  

Finally, Tata Consultancy Services (TCS) noted a few practical hurdles that must be considered if and when AI inventors are recognized. For example, execution of an assignment of the patent right to another entity, signing a declaration by the inventor stating its belief that he or she is the true inventor, and submitting a disclosure to the USPTO listing the prior art known to the inventor would all be challenging for an AI inventor to accomplish.

The prevailing view of U.S. commentators is consistent with the approach taken by most foreign jurisdictions. For example, both the EPO and the UKIPO rejected patent applications identifying AI as a named inventor on the basis that “the designation of inventor” does not meet the requirements of the patent laws. While the USPTO has yet to issue new regulations or guidelines based on the responses it received to its Request for Comments, two applications related to those rejected by the EPO/UKIPO are believed to remain pending before the Patent Office. 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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