Do Androids Dream of Patent Protections? American Patent Law and AI-Generated Inventions
By: Sydney Dominguez
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The incredible ability of artificial intelligence (AI) has captured the minds of inventors, writers, scientists, and others from the first days of its conception (arguably in the study of famed mathematician and Enigma codebreaker, Alan Turing). Recently, a question directly related to AI has come before the federal bench.
On September 3, the U.S. District Court for the Eastern District of Virginia decided Thaler v. Hirshfeld, holding that an AI machine may not qualify as an inventor under American patent law. The court found that the language of the 2011 America Invents Act—the nation’s prevailing patent law—states that an inventor must be an “individual,” and that AI machines do not fit the Supreme Court’s definition of “individual.” The court drew from the Supreme Court’s opinion in Mohamad v. Palestinian Authority, where the Court defined the term “individual” for purposes of the Torture Victim Protection Act as a “natural person.” Moreover, since later references to an “individual” in the America Invents Act are accompanied by references to “himself or herself,” the court held that reading “individual” according to its “ordinary usage” was appropriate for determining meaning and scope of the law.
The plaintiff in the case, Dr. Stephen Thaler of Imagination Engines, Inc., argued that the court should interpret “individual” in light of “the Founders’ intent in enacting the Patent and Copyright Clause.” Dr. Thaler—who is the inventor of DABUS, an AI system that mimics human brainstorming and which is listed as the inventor on several patent applications—argued that the Founders intended the patent system to foster rigorous innovation, and that limiting inventors to only natural persons would stifle that goal. The court, however, responded that such a line of argument would essentially allow any statute to be interpreted in a manner inconsistent with a term’s plain meaning. The court concluded that:
As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.
However, the court’s ruling is not the end of this patent. In addition to appealing the decision to the Federal Circuit, Dr. Thaler’s invention has already received a patent on its AI-generated invention in Australia, despite the lack of definition of an “inventor” in the Australian Patents Act of 1990. Justice Beach of the Federal Court of Australia—himself a physics major in college—wrote that there is nothing inherent in the term “inventor” which requires it to refer to a natural person. Moreover, Justice Beach took the opposite position of the Eastern District of Virginia, stating that the object of the Australian Patents Act—to foster “economic wellbeing through technological innovation”—would be well-served by the inclusion of AI machines in the definition of “inventor.”
The American and Australian courts differed in how they handled Dr. Thaler’s case, with the American court applying a textualist methodology and the Australian court using legislative intent. This case highlights the importance of statutory interpretation as we address ever more sophisticated technology on a global scale. Against the backdrop of these debates, scientists across the world discover and harness more uses for AI every day—innovative uses which require patent protections in many nations. Because of the importance of prior art investigations in patent prosecution, it would greatly aid American inventors if the naming of inventors were standardized across the globe—removing extra work that would be consumed by searching for both human inventors and AI inventors in patent applications. To achieve this end, Congress could amend current patent law to mirror laws such as Australia’s, which refer to the creator of an invention as an “inventor,” rather than an “individual.” (This would also have the added benefit of allowing patent law terms to be defined by patent law itself, as opposed to using terms from human rights cases to define terms in patent laws.)
If America is to keep up in in the global technological markets, it must find a way to grant robust patent protections to AI-generated inventions.
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