“35 U.S.C. §103 provides that patentability ‘shall not be negated by the manner in which the invention was made.’ Thus, a conception step, as discussed in depth by the USPTO decision in the ‘350 application, should not be a prerequisite for patent protection.”
On July 29, 2019, U.S. patent application serial number 16/524,350 was filed with the U.S. Patent and Trademark Office (USPTO), with the sole inventor identified as artificial intelligence named “DABUS.” The assignee, Stephen Thaler, acknowledged that the invention was made by the creativity machine, without any human input. The USPTO issued a notice of missing parts, requiring identification of each inventor by name. Thaler then petitioned that the missing parts notice be vacated, which was denied, and Thaler petitioned for reconsideration.
The USPTO issued its decision on the reconsideration petition on April 29, 2020, again denying the petition and concluding that the patent laws required a natural person as an inventor. The decision asserts that conception is the touchstone of invention, as the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is to be applied in practice. However, this decision is too narrowly focused, and should be reversed by the U.S. Court of Appeals for the Federal Circuit if Thaler appeals the USPTO ruling.
AI is Science
The entire U.S. patent system is premised on the objective of promoting science and the useful arts, as stated in the Constitution, Section 8, Clause 8. Clearly, artificial intelligence is science. Therefore, AI is encompassed by the Constitution, and should be promoted accordingly.
The USPTO requirement for a human inventor overlooks the statutory language that patents are not limited to inventions. As stated in 35 U.S.C §101, patents can also be granted for discovery of a new and useful process, machine, manufacture or composition of matter. The ‘350 patent application is based on the discovery by DABUS of a novel device and method for attracting enhanced attention, such as signal indicators and beacons (typically based upon color, brightness, periodic flashing frequency, rotational pattern, and motion) using a fractal dimension.
The USPTO decision on the ‘350 application focuses largely on conception as a necessary mental step in the inventive process. The USPTO’s citation of the 2013 Federal Circuit decision Univ. of Utah v.Max-Planck-Gesellschafl zur Forderung der Wissenschaflen e. V (734 F.3d 1315) is not conclusive. The Court ruled in that case that the mental step of conception of an invention must be performed by a natural person. This does not answer the situation where an invention or discovery does not involve such a mental step.
Flash of Genius
Some inventions do not derive from conception, but rather may be the result of a “flash of genius,” the proverbial light bulb turning on, or simply by accident without any mental conception step. Famous patented products resulting from accidents include Post It sticky notes (5,194,299 – 1993), the Slinky toy (2,415,012 – 1947), and Play Doh modeling clay (3,167,440 – 1965).
35 U.S.C. §103 provides that patentability “shall not be negated by the manner in which the invention was made.” Thus, a conception step, as discussed in depth by the USPTO decision in the ‘350 application, should not be a prerequisite for patent protection. If no mental step of conception is needed, then a natural person is not necessary for a patentable invention or discovery. Without a human step of conception of the invention, the rationale of the USPTO seems to evaporate, such that AI generated inventions and discoveries become protectable.
The USPTO also asserts that the language from 35 U.S.C. 101 “Whoever invents or discovers…” suggests a natural person. But asking “who is the inventor” is no different than asking “who is the computer in 2001 A Space Odyssey” or “who are the robots in Star Wars?” Obviously, HAL, 3CPO and R2D2 are not natural persons. So, concluding that “whoever” in the patent statutes infers a natural person is an over-simplification.
Also, the USPTO’s position is inconsistent with the April 10, 2020 decision of the Federal Circuit, which concluded that the statutory language allowing a “person” to file a petition for post grant review includes banks. See Bozeman Financial, LLC v. Federal Reserve Bank, (Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. CBM2017- 00036). This statutory interpretation that “persons” is not limited to natural persons seems to undercut the USPTO interpretation that an inventor must be a natural person.
The Chakrabarty Analogy
A similar issue arose 40 years ago with respect to the scope of patentable subject matter under Section 101. Prior to 1980, living things were generally understood not to be subject to patent protection. Then the U.S. Supreme Court ruled in Diamond v. Chakrabarty, 447 U.S. 303, that a live, human-made organism was patentable subject matter under §101. Chief Justice Warren Burger noted that Congress contemplated that the patent laws should be given wide scope. He also cited the 1933 Supreme Court decision United States v. Dubilier Condenser Corp, 289 U.S. 178, which cautioned against reading limitations and conditions into the patent laws which Congress had not expressed.
As is clear from Chakrabarty, patents protect various subject matter that was never contemplated when the Constitution was written or the patent statutes were enacted. Science evolves to new technologies, many for widespread benefit of mankind. Likewise, inventions and discoveries by artificial intelligence have and will continue to evolve, too, with solutions to long-felt needs and improvements to existing technologies that cannot be contemplated today. These inventions should not be precluded from patent protection merely because a person did not conceive of the idea. Otherwise, the lack of patent protection will not promote the progress of the science of artificial intelligence.
Image Source: Deposit Photos
Image ID: 144709683