AI-Assisted Inventions Could Spur New Patent Litigation Wave

From Bloomberg Law:

The amount of human involvement needed to secure a patent when artificial intelligence is used to create an invention remains up in the air after a Federal Circuit decision shutting down the possibility of solo AI inventorship.

Patent attorneys expect more litigation on the use of AI in inventions to follow the US Court of Appeals for the Federal Circuit’s ruling last week that artificial intelligence systems can’t be the sole inventors on patents. The three-judge panel noted that the decision was confined to the question of whether computer scientist Stephen Thaler’s creativity machine could be the only inventor listed on a patent application, not whether inventions “made with the assistance of AI” are eligible for patent protection, according to the precedential opinion.

The opinion left unresolved how some provisions of the Patent Act should be interpreted when AI is involved and what constitutes sufficient human contribution for the person to qualify as an inventor, attorneys said. As the US Patent and Trademark Office grants such patents, courts will start having to grapple with new legal challenges surrounding AI inventions across industries.

. . . .

Thaler’s loss last week marked his latest setback in his quest to convince jurisdictions around the world that his creativity machine called DABUS is the rightful inventor on two patent applications. The Federal Circuit sided with courts in Australia and Europe that found only humans can be inventors under existing statutes. Thaler said he plans to appeal the Federal Circuit’s decision to the US Supreme Court.

It would be up to Congress to change the Patent Act to allow for non-human inventors, but until then, there’s “no ambiguity,” Judge Leonard P. Stark wrote in the opinion.

More challenges to patents created with the help of AI will follow, said Susan Krumplitsch, a partner at DLA Piper, though they likely won’t center on whether the AI should be allowed to be the inventor, as Thaler argued. When inventions rely on machine learning and neural networks, it’s not clear how important the person was in the creation of the invention, she said.

“These issues haven’t been explored,” Krumplitsch said. “I would expect in the coming years, as these patents come up, and we see them in court, and they’re pulled apart, we’ll see more of a focus on who was doing what, and was the human contribution enough to be an inventor contribution.”

If the artificial intelligence system did all or most of the work, the humans involved in the inventions may not be able to take the oath required by the patent office that they are the rightful inventors, said Christopher S. Schultz, a partner at Burns & Levinson LLP in Boston.

Link to the rest at Bloomberg Law

As PG mentioned in earlier posts, it’s only a matter of time until the AI/author copyright question arises as well.

5 thoughts on “AI-Assisted Inventions Could Spur New Patent Litigation Wave”

  1. With the Faux AI “creativity” question, there are four aspects to consider:
    1- Who created/owns the engine.
    2- Who trained the tool.
    3- Who aimed it. (Gave it the “seed parameters” as in the game of LIFE.)
    4- Who created/owns the database used to train the tool.

    Rather than crediting the tool, I’d be inclined to look carefully at the database. Because a case can be made that content created based on exposure to the database is a derivative work. And databases are already contentious enough.

    Crediting the tool strikes me as not too different from crediting Image processing software from Adobe, Corel, etc for applying a filter to a photo. Or any of a wide range of simulation tools used in engineering design. In all these cases the IP is generally assigned to the human (or institution) using the tool, if to anybody, correct?

    These attempts to set precedents strike me as stunts, a solution in search of a problem.

    And if somebody does create a tool that creates original content? (For uncertain values of “original”) Who set the parameters and hit “go”? And under what terms did they license the software?

    Any such act of creation still starts with humans.

  2. Try this one, folks:

    Signature quote:
    “Take Cosmopolitan’s recent and “world’s first artificially intelligent magazine cover,” for instance: the image of a giant astronaut walking on the surface of a planet against a dark sky splattered with what looks like stars and gas as produced by OpenAI’s DALL-E 2 model. Karen Cheng, a creative director, described trying various text prompts to guide DALL-E 2 in producing the perfect picture.

    The winning sentence “wide-angle shot from below of a female astronaut with an athletic feminine body walking with swagger toward camera on Mars in an infinite universe, synthwave digital art,” is what inspired Cheng, according to Cosmopolitan. She then edited DALL-E 2’s image to create the final sleek cover for the glossy magazine. Who owns the copyright? Who is the author of the image? ”

    “The answer likely depends on how much human input was required to create something, Mike Wolfe, a copyright lawyer from Rosen, Wolfe, and Hwang, told The Register.

    “Where AI has played an essential role in the creation of a work, there are still pathways to some copyright protection. Even with a very capable AI, there will probably be a lot of room for human creativity. If AI helps generate a song and makes the bass line, but the creative professional makes it more complete by filling in gaps to make a cohesive piece of music, that act itself would likely give right to copyright on the basis of human authorship.”

    Much more at the source, including the suggestion that copyright protection would *only* acrue to the human contribution and that the AI portions would be free game. Methinks determining the border would generate lots of billable hours. Far more than tbe “savings” from using the tool.

  3. Keep in mind, too, the purpose of copyright (and patent): Encouraging “progress in the useful arts and science” (in the US constitutional formulation, Art. I § 8 cl. 8) by creation of more creative/innovative works.

    Unless and until AI has discernable “motivation” of its own, it is only going to operate at human impetus. That, in turn, means that as to the machine both copyright and patent are entirely irrelevant. That doesn’t mean that the AI can’t be “creative,” or “inventive,” in some abstract sense (especially when working as part of a team with one or more meatbags) — it means that the AI can’t be an “author” or “artist” or “inventor” under any present understanding of those terms that is not just agenda-driven idiosyncracy.

    • Agreed, C.

      If an AI could, without any outside prompts, analyze the current marketplace for unmet needs, identify an unmet need that it was capable of resolving, determine that the size of the unmet need was such that there was an economically-viable path to meeting that need with a product that could be designed, developed and produced at scale, then do all the work necessary to develop a design for a prototype and build a prototype to that design that worked as anticipated, hire a patent lawyer and explain the unique nature of the product/service it had created sufficiently so the patent lawyer could perform a search to determine whether any part of the product/system infringed on an existing product/service which was patented or otherwise protected under the law, then, after understanding what the patent attorney had found, modify the product/service to avoid infringing on any existing patented product/service, then I would be willing to concede that an AI was capable of providing all the documentation necessary for the patent attorney to prepare a draft of a patent application (providing that the AI was capable of reviewing all drafts of a patent application to determine if the application accurately reflected what the AI had created and provide appropriate guidance to the attorney to modify the patent application), then I could be persuaded that an AI was capable of inventing something.

      I neglected to include understanding the comments/concerns of the patent examiner sufficiently enough to guide the AI’s patent attorney in revising the application and resubmitting it.

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