Artificial Intelligence (AI)

PatentNext Summary: In August 2022, the Federal Circuit in Thaler v. Vidal held that U.S. patent law requires a “human” inventor. In 1884, the U.S. Supreme Court in Burrow-Giles Lithographic Co. v. Sarony held that a human could be the “author” of a photograph. In both cases, a type of “machine” was used to produce an output. Namely, in Thaler a “creativity machine” (a type of Artificial Intelligence (AI)) output and conceived the subject matter of a patent application allegedly without human involvement. In Burrow-Giles a camera output (captured) a photograph, but with human involvement (i.e., the photographer selected and arranged the scene of the photograph). While the Thaler court found that a machine alone cannot be an inventor, it raised the possibility of AI-assisted inventorship that included human involvement (e.g., sole or joint inventorship). Future courts considering the issue of AI inventorship could find the 1884 case of Burrow-Giles instructive, where the photographer’s selection and arrangement for the scene of a photograph in 1884 provides a useful analogy to a modern-day human AI developer’s selection and arrangement of training data, hyperparameters, or other features typically required to train and/or use an AI model.
Continue Reading The Curious Case of Burrow-Giles Lithographic (an 1884 U.S. Supreme Court decision involving “new” camera technology), and how it could help Shape Today’s Thinking on Artificial Intelligence (AI) Inventorship

PatentNext Summary: The Legal Board of Appeal (the “Board”) of the European Patent Office (EPO) recently suggested that the owner of an artificial intelligence (AI) machine could possibly be listed as an inventor of an AI-generated Invention. This suggestion arguably opens the door for companies or individuals, who own or use AI-generating machines, to designate themselves (instead of the AI machine) as the “inventor” on a patent application, even where the invention was wholly conceived by the AI machine itself.

Continue Reading European Patent Office (EPO) Suggests that the Owner of an Artificial Intelligence (AI) Machine Could be Listed as the Inventor of an AI-Generated Invention

PatentNext Summary: Artificial Intelligence (AI) Patent Application filings continue their explosive growth trend at the U.S. Patent Office (USPTO). At the end of 2020, the USPTO published a report finding an exponential increase in the number of patent application filings from 2002 to 2018. This trend has continued. In addition, current data shows that AI-related application filings pertaining to graphics and imaging are taking the lead over AI modeling and simulation applications.
Continue Reading Artificial Intelligence (AI) Patent Filings Continue Explosive Growth Trend at the USPTO

I have been monitoring patent application filings around the world that list DABUS (the “Device for the Autonomous Bootingstraiming of Unified Sentience”) as the sole inventor. At issue is whether an Artificial Intelligence (AI) machine alone can be listed as an inventor on a patent application. A detailed chart, with country-by-country decisions, can be found here: Can an Artificial Intelligence (AI) be an Inventor? 

In today’s posting, I provide updates to this article. These come from the respective decisions of the patent offices, or related appellant courts, of New Zealand, EPO, and the UK.

Continue Reading Updates on AI Inventorship: New Zealand, the EPO, and the UK allow an Artificial Intelligence (AI) machine to be listed as a Joint Inventor along with at least one Human Inventor

I am excited to announce the publication of the Intellectual Property Owner (IPO)’s white paper on “Protecting Inventions Relating to Artificial Intelligence: Best Practices.

The paper was authored by the IPO’s Software Related Inventions Committee and the Artificial Intelligence (AI) & Other Emerging Technologies Committee, of which I am a member.

Continue Reading Announcing IPO white paper on Best Practices for Protecting Inventions Relating to Artificial Intelligence

On January 25, 2022, the Japan Patent Office (JPO) updated its web page with a section titled “The JPO Key Features” (see https://lnkd.in/d9XqGYGm). The JPO Key Features provide examination statistics on timelines for utility patents, design patents, and trademarks at the JPO.

Also, the website provides several JPO Guidelines.

Continue Reading The Japan Patent Office (JPO)’s Manga Patent Examination Guidelines for Artificial Intelligence (AI) and Internet Of Things (IoT)

PatentNext Summary: Sufficiency of disclosure for Artificial Intelligence (AI) inventions in the U.S. can be supported by expert testimony opining on the knowledge that one of ordinary skill in the art would have held based on the disclosure for the patent specification.

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In an earlier article, we compared the sufficiency of disclosure for Artificial Intelligence (AI) patents in the U.S. and the European Patent Office (EPO). See A Tale of Two Jurisdictions: Sufficiency of Disclosure for Artificial Intelligence (AI) Patents in the U.S. and the EPO.

Continue Reading Sufficiency of Disclosure for Artificial Intelligence Patents – U.S. Case Example

PatentNext Summary: In order to prepare patent applications for filing in multiple jurisdictions, practitioners should be cognizant of claiming styles of the various jurisdictions that they expect to file AI-related patent applications in, and draft claims accordingly. For example, different jurisdictions, such as the U.S. and EPO, have different legal tests that can result in different styles for claiming artificial intelligence(AI)-related inventions.

In this article, we will compare two applications, one in the U.S. and the other in the EPO, that have the same or similar claims. Both applications claim priority to the same PCT Application (PCT/AT2006/000457) (the “’427 PCT Application”), which is published as PCT Pub. No. WO/2007/053868. 

Continue Reading A Tale of Two Jurisdictions: Sufficiency of Disclosure for Artificial Intelligence (AI) Patents in the U.S. and the EPO

PatentNext Summary: Computer and software-implemented inventions, especially in the field of Artificial Intelligence (AI), have experienced explosive growth in both Korea and the U.S. This article compares the similarities and differences between the patent laws of the two countries and identifies considerations when drafting a software-related patent application, with a focus on AI as an example technology.

This article is co-authored by Seong Tahk AHN and Ryan N. Phelan.

Continue Reading Patenting Software Inventions in Korea and the U.S.

PatentNext Summary: Currently, patent laws require human inventors. For this reason, no country or legal jurisdiction presently allows an Artificial Intelligence (AI) to be an inventor. Such patent laws, however, are typically decades old and we can expect continued debate, and possible legislation, on the topic of whether an AI can be an inventor.

SUMMARY UPDATE (08/9/21): Since the initial post, South Africa has issued the world’s first patent that listed an AI inventor. Also, since the initial post, an Australian judge has become the first jurist to rule that AI systems can be recognized as an inventor on patent applications.

The below article provides additional details.

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Can Artificial Intelligence (AI) invent? No, according to various patent offices and patent laws around the world. Resistance to an AI as an inventor primarily stems from the fact that the written text of existing patent laws refers to human inventors, e.g., “individuals” or “persons,” which leaves little or no room for interpretation of a non-human AI as an inventor.

Continue Reading Can an Artificial Intelligence (AI) be an Inventor?