Patenting AI inventions

For as long as the U.S. patent system has existed, emerging technologies, even those considered “primitive” by today’s standards, have posed challenges in the interpretation and application of patent laws. Patenting AI inventions has become more popular in recent decades. Also, in the recent decades of rapid advancement of computing and networking technologies are perhaps the most profound examples.

Rapidly advancing computing technologies, for example, have created significant upheaval in the interpretation and application of one of the most fundamental concepts of patent law, namely the statutory eligibility of an invention for patent protection under Section 101 of the patent statute (35 U.S.C. § 101), as applied to inventions involving computer software and “computer-implemented” inventions.

What is AI?

“Artificial Intelligence” or “AI” is a term used to describe the capabilities of man-made computing devices to emulate or exhibit adaptive and human-like attributes. “Machine learning” may be considered a comparable descriptor. 

Start-up businesses often succeed by leveraging off of emerging trends and technologies, and inclusion of AI or machine learning components into innovative products and services is not likely to be an exception to this.

Seemingly in recognition of this, the U.S. Patent & Trademark Office (PTO) has requested public input on issues regarding artificial intelligence inventions “for purposes of evaluating whether further examination guidance is needed to promote the reliability and predictability of patenting artificial intelligence inventions.” (FR Doc. 2019-18443 Filed 8-26-19; 8:45 am). The PTO request can be found here: 

https://www.federalregister.gov/documents/2019/08/27/2019-18443/request-for-comments-on-patenting-artificial-intelligence-inventions

USPTO Questions Raised

The questions posed by the PTO relate not only to the question of innovations within the field of AI itself, but also innovations achieved as a result of applying AI to obtain a solution. In a sense, this is no different than distinguishing between the inventiveness of microprocessor designers and that of the software engineers controlling the operation of the microprocessors.

Yet in the context of AI, there remains the possibility that both hardware and software designers may achieve further innovation, with the application of their hardware and software in an AI system, say, a neural network or so-called “machine learning” system, to reach new levels of innovation.

In this context, the PTO has presented the following “Issues for Comment”:

1. Inventions that utilize AI, as well as inventions that are developed by AI, have commonly been referred to as “AI inventions.” What are elements of an AI invention? For example: The problem to be addressed (e.g., application of AI); the structure of the database on which the AI will be trained and will act; the training of the algorithm on the data; the algorithm itself; the results of the AI invention through an automated process; the policies/weights to be applied to the data that affects the outcome of the results; and/or other elements.
2. What are the different ways that a natural person can contribute to conception of an AI invention and be eligible to be a named inventor? For example: Designing the algorithm and/or weighting adaptations; structuring the data on which the algorithm runs; running the AI algorithm on the data and obtaining the results.
3. Do current patent laws and regulations regarding inventorship need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of an invention?
4. Should an entity or entities other than a natural person, or company to which a natural person assigns an invention, be able to own a patent on the AI invention? For example: Should a company who trains the artificial intelligence process that creates the invention be able to be an owner?
5. Are there any patent eligibility considerations unique to AI inventions?
6.  Are there any disclosure-related considerations unique to AI inventions? For example, under current practice, written description support for computer-implemented inventions generally require sufficient disclosure of an algorithm to perform a claimed function, such that a person of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Does there need to be a change in the level of detail an applicant must provide in order to comply with the written description requirement, particularly for deep-learning systems that may have a large number of hidden layers with weights that evolve during the learning/training process without human intervention or knowledge?
7. How can patent applications for AI inventions best comply with the enablement requirement, particularly given the degree of unpredictability of certain AI systems?
8. Does AI impact the level of a person of ordinary skill in the art? If so, how? For example: Should assessment of the level of ordinary skill in the art reflect the capability possessed by AI?
9. Are there any prior art considerations unique to AI inventions?
10. Are there any new forms of intellectual property protections that are needed for AI inventions, such as data protection?
11. Are there any other issues pertinent to patenting AI inventions that we should examine?
12. Are there any relevant policies or practices from other major patent agencies that may help inform USPTO's policies and practices regarding patenting of AI inventions?

FR Doc. 2019-18443

Some fundamental questions about the interplay between AI and the patent system are quite compelling. For one example, if a hardware and software team creates an AI-capable system adapted to solve one or more problems, and the system is subsequently proven to have solved the problem, who “invented” the solution? This is not a purely academic inquiry, as the question of inventorship has been an important factor in U.S. patent law since its earliest incarnations.

If the interplay between the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court as it relates to Section 101 eligibility are any indication, there is little doubt that the questions raised by the PTO in this call for information are tidings of things to come in prosecution of patent applications and litigation of patents for some time to come.

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