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Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 23, Issue 18

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AI: Artificial Inventor? USPTO Reenters the Conversation

By Kameron F. Bonner

In a previous edition of Fish Tank, we discussed the advancement of artificial intelligence (AI) inventorship with an AI system called Device for the Autonomous Bootstrapping of Unified Sentience (DABUS) being declared a patent inventor in South Africa and Australia, despite the U.S. taking a different approach with a Federal Circuit Court in Thaler v. Vidal affirming the U.S. Patent and Trademark Office’s (USPTO) position that only natural persons (i.e., human beings) can be named inventors on U.S. Patents. 

Now, the USPTO has re-entered the conversation, recognizing the significance of the Thaler decision and the uncertainty around AI contributions to inventions. In mid-February of 2023, the USPTO released a Request for Comments Regarding AI and Inventorship, which is part of a broader initiative to explore the role of AI in innovation as discussed in a recent Director’s Blog by Kathi Vidal, Director of the USPTO.  

However, despite USPTO and Federal Circuit Court opinions suggesting that inventions made by human beings with the assistance of AI may be eligible for patent protection, there is still much uncertainty over just how much AI assistance is too much. As companies begin to take advantage of the unique efficiencies and benefits of AI, including the utilization of chatbots like ChatGPT and Bard, answering the questions surrounding inventorship for AI-created inventions only increases in importance. This is especially true for biotechnology and AI-developing companies. 

In comments submitted to the USPTO by the Biotechnology Innovation Organization (BIO) and tech giant Microsoft, a common theme emerged which characterized AI as a “tool” that facilitates human invention-making and hence the use of AI should not outright preclude inventorship, which is a prerequisite to patentability. This approach treats AI as a human-directed tool, aiding the people using the AI systems, which is not fundamentally different from using other technical tools in the invention-creation process. 

Whether the USPTO adopts this interpretation remains to be seen. The issue of inventorship for AI-created or AI-assisted inventions will have significant implications on the future of innovation and creativity for companies that develop and use AI technology. While the discussion around AI inventorship unfolds, companies should be aware of alternative ways to protect their AI-generated inventions, such as trade secrets. 

Kameron is a partner and registered patent attorney at Fishman Stewart PLLC, specializing in Intellectual Property with ten (10) years of experience counseling clients on patent, trademark, and related contractual matters. Kameron’s practice encompasses all aspects of preparing, procuring, and enforcing worldwide IP rights. Check out his full bio here

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