Every inventor has, at one time or another, had the moment where all seems lost. Every avenue that could possibly yield a fruitful alleyway towards profitability has been trodden, and each industry contact that could potentially offer a path towards success has been contacted. The item that began as a simple idea, was built into a homemade prototype, and was eventually turned into a real product by a professional design firm, has not gotten the interest from the industry that had been dreamed of. This realization can be a serious cause for grief for those who have spent countless hours defining and tweaking their product, building relationships with designers, patent attorneys, industry insiders, and other inventors, and still have not achieved their ultimate goal of successfully bringing their product to market. These periods of time can be difficult, as it can feel like you are saying goodbye to a friend that has brought you so much hope, and joy throughout the development process.
Who holds the patent on gravity? Who collects the royalties for the speed of light? In this episode of IP Goes Pop!, Volpe Koenig Shareholders and podcasts hosts, Michael Snyder and Joseph Gushue, explore what intellectual property (trade secrets, trademarks, patents and copyrights) cannot protect. Hint- some things excluded from IP protection include the Laws of Nature such as gravity, the speed of light and even Einstein’s theory of relativity E=MC2. Abstract ideas are another. But what other “can’t”s stand between you, your idea, and protections for it?
Earlier this month, IP diversity advocacy group Invent Together announced that it had launched an online learning platform known as The Inventor’s Patent Academy (TIPA), an e-learning course designed in collaboration with Qualcomm to educate inventors from diverse and underrepresented backgrounds about the benefits of engaging with the U.S. patent system. This online academy is the latest of several efforts by Congress and patent system stakeholders in recent years to unlock the innovative potential of women, people of color, LGBTQIA, and low-income inventors to benefit the U.S. economy.
The question that we receive most frequently from inventors, usually independent inventors, relates to whether a provisional patent application can be refiled with the United States Patent and Trademark Office (USPTO). Before giving the correct answer, it is critically important for everyone to understand that if a provisional patent application is refiled it may become impossible for a patent to ever be obtained, period. Can a provisional patent application be refiled? The short, easy answer to the question is yes, of course you can refile the provisional application. The USPTO will be happy to have you refile the application, take your filing fee, and send you a new filing receipt. The problem for you, as an inventor, however, is the consequence of refiling a provisional application. So, while it may be very easy to do, and seem like you’ve just extended the life of your original provisional application, that is precisely NOT what has happened, and you may have – indeed likely have – made it impossible to ever obtain a patent anywhere in the world.
On September 2, the U.S. District Court for the Eastern District of Virginia issued a decision granting a Motion for Summary Judgment for the United States Patent and Trademark Office (USPTO) and upholding the Office’s view that AI algorithms cannot be listed as inventors on U.S. patents. The court pointed to the Administrative Procedures Act’s (APA’s) strong deference to final agency decisions, barring any egregious errors. DABUS generated outputs corresponding to (1) a fractal design for food container surfaces that may help prevent stacked containers from sticking together and (2) a technique for controlling the timing of flashing warning lights to help attract attention. Dr. Stephen Thaler (DABUS’s creator and owner) filed patent applications on these inventions that were filed around the world, listing Thaler as the applicant and listing only DABUS as the inventor.
With South Africa’s patent office having recently granted the first patent to an AI inventor, and an Australian court ruling in favor of AI inventorship, it’s time to review how we got here—and where we’re going. The number of artificial intelligence (AI) patent applications received annually by the United States Patent and Trademark Office (USPTO) grew from 30,000 in 2002 to more than 60,000 in 2018. Further, the USPTO has issued thousands of inventions that utilize AI. According to a 2020 study titled “AI Trends Based on the Patents Granted by the USPTO”, the total number of AI-related patents granted by the USPTO per year increased from 4,598 in 2008 to 20,639 in 2018. If AI-related patent applications and grants are on the uptick, what was the problem with DABUS?