Earlier this month, a federal district court issued the first judicial decision in the country addressing whether an AI system can be an "inventor" under U.S. patent law. The decision was rendered by the U.S. District Court for the Eastern District of Virginia in Thaler v. Hirshfeld on appeal from the U.S. Patent and Trademark Office's (USPTO) decision that refused to allow Thaler's two patent applications to proceed because he listed DABUS (an AI machine) as the inventor.

Thaler filed the applications in 2018—one for an invention used to contain food and the other for a flashing beacon for attracting attention in emergencies. In statements filed in support of the applications, Thaler listed DABUS as the inventor, claiming that he had acquired the right to the grant of the patents by "ownership of the creativity machine."

In affirming the USPTO's denial of the applications, the court held that based on the plain statutory language of the U.S. Patent Act and Federal Circuit authority, an AI machine cannot be an inventor because an inventor must be an "individual," which under common interpretation and court precedent means a natural person. The court stated that Thaler's argument was based on policy considerations and the purpose of the patent clause of the U.S. Constitution, and that the decision to expand the scope of inventorship is squarely within the authority of Congress. Thaler has appealed the decision to the U.S. Court of Appeals for the Federal Circuit.

Thaler has sought patent protection in over a dozen countries, so far with mixed success. He recently lost a similar appeal in the U.K. but won rulings in Australia and South Africa. It remains to be seen whether Thaler will further appeal the U.K. decision.

These decisions highlight the legal, legislative and policy debates occurring across geographies not only with respect to whether AI machines can be inventors under patent law, but also whether such systems can be deemed "authors" of creative works under copyright law. These debates reflect a tension between two primary perspectives.

One perspective concerns the potential impact on investment and innovation in AI systems if inventions and creative works that such systems create, independent of human input and control, cannot be protected under intellectual property laws (e.g., AI inventions might go unpublished and would be protected by way of trade secrets or confidentiality instead, effectively undermining the role of the patent system in creating an incentive to publish an invention.)

Another perspective cautions against moving prematurely to implement legislative changes based on a view in the industry that current AI systems are narrowly focused (i.e., perform in well-defined domains) and require some level of human involvement vs. systems based on artificial general intelligence (i.e., systems with intelligence akin to that possessed by a person). Such differing perspectives are reflected, for example, in the AI IP policy conference that the USPTO held on January 2019, as well as the USPTO's October 2020 "Public Views on Artificial Intelligence and Intellectual Property Policy."

So what does this all mean?

From a practical perspective, for U.S. companies, probably not much. The relevant patent statutes, 35 U.S.C. §§ 100-101, already define an inventor as someone who "invented or discovered the subject matter of the invention." So while an applicant might not be able to name the AI system as an inventor or co-inventor, the applicant can still get a patent by listing the humans(s) who discovered the AI system's output, recognizing and appreciating its value.

This is already the case with technologies such as high throughput screening, where automated systems do a lot of the work identifying patentable inventions. In other words, with humans involved in the inventive process, there should always be a human inventor who can be named. That being said, given the current pace of innovation, it may not be long before Congress has to decide whether to allow humans to be completely cut out of the process.

It is more complicated, however, for companies in jurisdictions where AI systems are allowed to be inventors. To extend patent protection to the United States (and other jurisdictions where AI cannot be an inventor), such companies will have to update inventorship to identify the human inventors according to U.S. standards of inventorship.

Extending patent protection often occurs months or years after the original patent application has been filed, long after memories have faded. Getting inventorship wrong can render a patent invalid. Consequently, these companies will have to plan ahead to ensure they can name the correct humans when the time comes.