Decide whether AI system can be a patent ‘inventor’: Experts

But can AI invent?

Legal scholars, patent authorities and even Congress have been pondering that question. The people who answer “yes” – a small but growing number – are fighting a decidedly uphill battle in challenging the deep-seated belief that only a human can invent.

Invention evokes images of giants such as Thomas Edison and eureka moments – “the flash of creative genius,” as Supreme Court Justice William Douglas once put it.

But this is far more than a philosophical debate about human versus machine intelligence. The role, and legal status, of AI in invention also have implications for the future path of innovation and global competitiveness, experts say.

The U.S. Patent and Trademark Office has hosted two public meetings this year billed as AI Inventorship Listening Sessions.

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Last month, the Senate held a hearing on AI and patents. The witnesses included representatives of big technology and pharmaceutical companies. Next to them at the witness table was Dr. Ryan Abbott, a professor at the University of Surrey School of Law in England, who founded the Artificial Inventor Project, a group of intellectual property lawyers and an AI scientist. The project has filed pro bono test cases in the United States and more than a dozen other countries seeking legal protection for AI-generated inventions.

“This is about getting the incentives right for a new technological era,” said Abbott, who is also a physician and teaches at the David Geffen School of Medicine at UCLA.

Rapidly advancing AI, Abbott contends, is very different from a traditional tool used in inventions – say, a pencil or a microscope. Generative AI is also a new breed of computer program. It is not confined to doing things it is specifically programmed to do, he said, but produces unscripted results, as if creatively “stepping into the shoes of a person.”

A central goal of Abbott’s project is to provoke and promote discussion about AI and invention. Without patent protection, he said, AI innovations will be hidden in the murky realm of trade secrets rather than disclosed in a public filing, slowing progress in the field.

The Artificial Inventor Project, said Mark Lemley, a professor at Stanford Law School, “has made us confront this hard problem and exposed the cracks in the system.”

But patent arbiters generally agree on one thing: An inventor has to be human, at least under current standards.

The project has experienced mixed results so far with patent authorities around the world. South Africa granted it a patent for a heat-diffusing drink container that was generated by AI, and most countries, including China, have not yet made a determination. In the United States, Australia and Taiwan, its claims have been turned down.

After the U.S. patent office rejected the project’s patent application – a decision upheld in a federal appeals court – Lawrence Lessig, a professor at the Harvard Law School, joined a brief filed this year with the Supreme Court.

In support of the project’s patent claim, Lessig and his co-authors wrote that the federal appeals court’s ruling “deprives an entire class of important and potentially lifesaving patentable inventions of any protections” and “jeopardizes billions in current and future investments” by undermining the incentive that patent protection would provide.

The Supreme Court declined to hear the case.

Many patents list several inventors, and company employees are frequently named while the patent’s owner is their employer. That suggests a middle ground for AI systems as a co-inventor, credited and fully disclosed – a partner rather than a solo creator.

“That may end up being where we land, but that’s a pretty big line to cross,” said Sen. Chris Coons, D-Del., chair of the Judiciary subcommittee on intellectual property.

If granting AI inventor status is a stretch today, stronger intellectual property protection for the fast-evolving technology is not.

Coons and Sen. Thom Tillis, R-N.C., introduced a bill last month to clarify what kinds of innovations are eligible for patents. It is intended as a legislative fix to the uncertainty raised by a series of Supreme Court decisions. Patents on AI, along with medical diagnostics and biotechnology, would most likely become easier to obtain, legal experts say.

The bill is not about AI specifically, but it “recognizes the direction of travel relative to AI” toward stronger patent protection, said David Kappos, a former director of the patent office and a partner at Cravath, Swaine & Moore.

At the Senate hearing, Abbott made the case for AI invention, helped by an odd-looking drink container he held up and described. It was created by an AI system trained on general knowledge. It had no training in container design, and it was not asked to make one.

The AI was built to combine simple ideas and concepts into more complex ones and identify when one had a positive outcome, a process repeated again and again. The resulting design was fed into a 3D printer. The container employs fractal geometry to improve heat transfer, a kind of anti-Thermos. It could, for example, be used to quickly make iced tea, boiled, steeped and refrigerated.

The container is easy to hold, difficult to drink from and not headed for commercial production yet. But it is certainly novel, and it is entirely the creation of an AI system without human control.

The AI system was created by Stephen Thaler, who has conducted AI research and development for decades, at McDonnell Douglas and later on his own. Abbott’s study of the AI field led him to Thaler, who agreed to use his technology to generate a demonstration invention or two for the Artificial Inventor Project.

Thaler’s patented system has some ingredients similar to those in generative AI models such as ChatGPT, and others that are not. He describes his system as having the machine equivalent of feelings. It becomes digitally excited, producing a surge of simulated neurotransmitters, when it recognizes useful ideas, setting off “a ripening process, and the most salient ideas survive.”

Thaler said the ability to recognize and react in that way amounted to sentience, and his generative AI system is called DABUS, for Device for the Autonomous Bootstrapping of Unified Sentience.

He regards the reluctance of patent authorities to recognize his system as an inventor as discrimination against a creation-capable machine. “It’s speciesism to me,” he said.

But Abbott said, “That’s totally irrelevant to the legal question.”

And that question will surely become more pressing in time. “There is a universal consensus that AI will only get better at this sort of thing,” Abbott said.