Posts Tagged: "inventorship"

The President’s recent Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence instructs the U.S. Patent and Trademark Office (USPTO) Director and Copyright Registrar to collaboratively issue recommendations to the President on further actions for advancing AI innovation through intellectual property, particularly with respect to AI inventorship and AI authorship. But the two offices currently regard AI differently in terms of assessing the creative and conceiving capabilities of machines, which poses a potential contradiction in how intellectual property law treats AI.

HIP, Inc. recently filed a petition for writ of certiorari with the U.S. Supreme Court asking the Justices to review a May 2023 U.S. Court of Appeals for the Federal Circuit (CAFC) decision holding an inventor’s contribution to a patent for methods of pre-cooking bacon and meat pieces did not satisfy the joint inventorship test because the contribution was “insignificant in quality.”

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a precedential decision, today reversed a district court holding that an inventor should be added as a joint inventor for his contributions to a patent for methods of pre-cooking bacon and meat pieces. The CAFC said the inventor’s contribution did not satisfy the three-part test articulated in Pannu v. Iolab Corp. because the contribution was “insignificant in quality.”

The United States Patent and Trademark Office (USPTO) is requesting public comments on artificial intelligence (AI) and inventorship via a Federal Register Notice published today, February 14. The Office has sought comment on the topic before, but not since its decision to deny patent protection to inventions created by Stephen Thaler’s artificial intelligence (AI) machine, DABUS. That decision was upheld by the district court and U.S. Court of Appeals for the Federal Circuit (CAFC) on appeal, but the CAFC in its decision left open the possibility that inventions made by human beings with the assistance of AI may be eligible for patent protection.

In Plastipak Packaging Inc. v. Premium Waters Inc., Appeal No. 2021-2244, decided December 19, 2022, the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) newest judge threw a curveball on the topic of inventorship. Judge Leonard Stark wrote the precedential opinion, joined by Judges Newman and Stoll, and ultimately reversed and remanded the U.S. District Court for the Western District of Wisconsin’s grant of summary judgment in favor of Premium Waters, Inc. Plastipak’s 12 patents in suit generally had to deal with unfinished plastic bottles as used during manufacturing.

In a recent webinar moderated by Gene Quinn, President & CEO of IPWatchdog, Ludwig APC founder, Eric Ludwig, and Pattric Rawlins, partner at Procopio Cory Hargreaves & Savitch, discussed the topic of inventorship, including subjects such as naming inventor(s) on a patent and the implications of amending and contesting Inventorship. “Matters of inventorship and patent ownership are easy until they’re not—until there’s a fight or a disagreement over co-inventorship,” Ludwig explained. “If the parties have a good relationship and there is an amicable decision to correct an error or omission as to who is named as an inventor, then that’s an easy process. If it’s contested, that’s when problems arise.”

The National Institutes of Health (NIH) is at legal odds with Moderna, claiming that Moderna neglected to add three NIH scientists to Moderna’s patent application on a principal COVID-19 vaccine. If a court ends up siding with NIH, it would co-own any issued patents on the technology, which could prove to be quite valuable; in 2021, Moderna’s vaccine sales were forecasted to be in the range of $15 billion and $18 billion. With an equal undivided interest in the patent, NIH could do whatever it wishes with it, such as licensing it to others and collecting royalties.

Moderna and the National Institutes of Health (NIH) are poised for a legal battle over inventorship of a vaccine for COVID-19. While a court may resolve the dispute over inventorship for the patent application, court review of current inventorship rules could be a slippery slope to chaos. Moderna and NIH collaborated on developing a functional vaccine for COVID-19, which is not in dispute. As a result of the collaboration, a vaccine labeled “mRNA-1273” was created and a U.S. patent application was filed by Moderna, with no NIH scientists listed as inventors. Moderna has commented that, after an internal review, no NIH scientists designed the actual vaccine claimed in the U.S. patent application. NIH has commented that it believes three scientists should be included in the U.S. patent application as co-inventors with the Moderna scientists.

Patent systems around the globe offer a quid pro quo that exchanges limited monopolies for disclosures of inventions. Most patent filings list: (1) the inventor(s); and (2) the applicant. The applicant may be an assignee (e.g., company, university, organization, etc.) with rights to seek patent protection on innovations that were identified during employment and that were within a scope of employment. Frequently, the assignee is a current or former employer of the inventor(s). In some jurisdictions (e.g., in the United States), the inventor(s) hold the rights to prosecute the patent application and assert any resulting patent unless and until the inventor(s) assign those rights to another entity (which is frequently done in employment and work?for?hire contracts). In some jurisdictions (e.g., the European Union), it is presumed that the party that applied for a patent holds the rights to the patent application. Thus, it is well-established that non-human entities may be the applicant, assignee, and/or owner of a patent. However, it is not well-established that a non-human entity may be an inventor on a patent applicant. Multiple patent offices (e.g., USPTO, UKIPO, and WIPO) have been considering what the standard in this respect should be.

The Federal Circuit reversed a district court finding that an inventor of water park surfing attractions breached his employment agreement and that his co-inventor was improperly listed as an inventor. The CAFC based the decision on its best prediction of how the California Supreme Court would interpret state law as applied to the case, applying the “employment contracts in a manner highly protective of former employees”.

On August 28, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the District of Massachusetts’ claim construction in Egenera, Inc. v. Cisco Systems, Inc., but vacated the court’s invalidity judgment based on judicial estoppel and remanded for further proceedings. Egenera, Inc. (Egenera) owned U.S. Patent No. 7,231,430 (the ’430 patent), which was based on a provisional patent application filed in 2001 and was directed to a platform for automatically deploying a scalable and reconfigurable virtual network. In 2016, Egenera filed suit against Cisco in the district court for infringement of the ’430 patent. Cisco then filed an inter partes review (IPR) Petition with the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) challenging the validity of the asserted claims.

The Dana-Farber Cancer Institute last week had its district court win affirmed when the Federal Circuit upheld a decision that two of the Institute’s researchers must be added as co-inventors on several patents relating to advancements in cancer treatment. The Court ruled that the United States District Court for the District of Massachusetts did not err in its determination that Dr. Gordon Freeman and Dr. Clive Wood should be added to the patents, and said that the appellants’ arguments would require the Court to “adopt an unnecessarily heightened inventorship standard.” Ono Pharmaceutical Co. Ltd., Tasuku Honjo, E.R. Squibb & Sons, L.L.C., and Bristol-Myers Squibb Co. (collectively, “Ono”) appealed the district court’s ruling.  

Earlier this year, the World Intellectual Property Organization (WIPO) received hundreds of submissions commenting on the Draft Issues Paper on Intellectual Property Policy and Artificial Intelligence. Contemporaneously, the notable DABUS cases were rejected by the EPO, UKIPO, and USPTO on the ground that AI cannot be named as inventor. The uncertainty in the ownership/inventorship of AI technology could impede investment and development of AI technology. This article aims to look into the WIPO submissions and arguments for addressing AI inventorship. Considering balancing the incentive of fostering AI technology and genuine inventorship, this article suggests seeing AI as a tool, or a pet, and that requiring the applicant to disclose any AI technology involved is the better resting place.

Recently a group out of the University of Surrey provided a new challenge to the definition of inventor, asking “who what may be an inventor on a patent?” The group has created an artificial intelligence (AI) named DABUS. Using a first system of networks to generate new ideas, and second system of networks to determine consequences, DABUS invented a beverage container and a flashing device used for search and rescue that are the subjects of patent applications filed in the United States and Europe.