The U.S. Patent and Trademark Office (PTO) is seeking feedback on artificial intelligence (AI), posing questions on whether the regulations or even the statute will have to be amended to allow the agency to issue patents for items invented in part or in whole by AI.

The Federal Register notice for the PTO announcement states that the agency's examiners have been evaluating AI patents "for decades," but notes that the term "AI inventions" has been used to describe both inventions that use AI and inventions that have been developed by AI. The agency said that one question on which it seeks feedback is whether the current laws and regulations are in need of revision to take into account the role of non-persons in the conception of an invention.

Many of the issues revolved around inventorship, but the PTO also highlighted the question of patent ownership, asking whether an entity or entities "other than a natural person or company" should be able to own a patent on the article invented by AI. Beyond this, the agency noted that there may be some unique disclosure issues associated with AI inventions, including that current practice stipulates that written descriptions for computer-implemented inventions "generally require sufficient disclosure of an algorithm" to allow someone of reasonable skill in the underlying art to conclude that the inventor actually possesses the claimed function.

The PTO inquired as to whether this disclosure requirement should be altered, particularly in the context of deep-learning systems that feature a number of functions that are not immediately evident and/or which may have evolved without the knowledge or awareness of the owner. Even the method of determining what constitutes ordinary skill in the art is of some interest at PTO. The PTO will take comment through Oct. 11, 2019, under docket number PTO-C-2019-0029.

The question of the legal status of AI as an inventor is not entirely novel, but there are some interesting dilemmas in the laws of many nations where AI is sufficiently advanced to create inventions. Title 35 of the U.S. code (§101) states that a patent can be obtained by "whoever invents or discovers" an article, while the U.K. Patents Act of 1977 frequently uses the word "person" to describe the entities entitled to patent protection for their inventions. However, the picture grows vastly more complicated from there when one makes the distinction between inventorship and ownership, as seen in an examination of the subject in the June 2018 issue of Cardozo Law Review. The authors noted that a number of stakeholders in the AI landscape could lay claim to any inventions stemming from an AI algorithm, including the software programmers who developed the underlying code.

Those who own the data used to train the algorithm might also seek to emphasize their role in the development of the algorithm, while other stakeholders include the operators of the algorithm. Each of these stakeholders could lay claim to ownership of any of the inventions derived from an AI system, which promises to grow more complicated upon consideration of the copyright laws that pertain to software development.

Aaron Gin, a partner at the Chicago office of McDonnell Boehnen Hulbert & Berghoff LLP, told BioWorld MedTech that AI should be included as inventors, adding, "it makes the most sense to try to capture inventors as all persons or entities that have contributed to the conception of at least one pending claim." As matters stand, Gin said, this would most likely result in an AI being named as a co-inventor rather than as a sole inventor, although he noted that the PTO may eventually have to deal with a patent filing for which the AI serves as the sole inventor.

Gin said, "the potential issue of AI patent ownership will impact a much more wide-reaching set of laws" than inventorship, adding that patent licensing and litigation are also likely to be affected. The legal status quo is unlikely to shift anytime soon, however, and Gin added, "for the time being, AIs should not be able to own a patent."

AI is nothing new for PTO

Brian Michalek, of the Chicago office of Saul Ewing Arnstein & Lehr, LLP, said developments in the U.K. are not the only stimulus the PTO has received on this question. "I've heard this conversation going on longer than just this month," Michalek said, adding that this is no knee-jerk reaction on the PTO's part.

Quick action from the PTO from a regulatory perspective might not be anytime soon in coming, Michalek predicted. "I think we're looking at years and not months, and while the PTO can certainly try [to address the patent inventorship question] from a regulatory perspective, congressional action would be the best way to handle it."

Even if the statute were amended only for the AI inventorship question, there would be a need for significant changes to the legal infrastructure, Michalek said, the absence of which suggests that a change to one portion of the statute would cascade to other portions. He noted that unintended consequences would almost certainly ensue were the statute amended without this in mind, but Michalek also said that Congress is more attuned to the subject matter eligibility question at present, and thus any move to amend the statute to deal with AI inventions would likely wait.

While it is difficult to predict how AI inventorship or ownership might affect liability law, Michalek said, "traditional patent principles could be instructive." Liability could hinge on the underlying agreements in place for licensing or sale where inventorship is the question, but he noted that product liability for device malfunction promises to be very complicated when an AI owns the patented article. The question of obtaining restitution "creates a bigger gaping hole" in the law in that scenario, he said.

Michalek also pointed out that patents prosecuted with an AI inventorship under the Patent Cooperation Treaty might arrive at a different outcome where AI inventorship and ownership are concerned. In that scenario, AI inventorship would likely suffer in a jurisdiction that does not recognize AI as an inventor, another factor patent applicants will have to consider when drafting patents enabled by AI.

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