April 28, 2020
The USPTO has published an apparently January 2020 Commissioner Decision effectively precluding the filing of patent applications where the invention was made solely by artificial Intelligence (AI). This decision has implications in the pharmaceutical industry where the use of AI to identify new compounds or uses for old compounds is utilizing AI. It also provides some guidance as to how the problem may be avoided.
The background facts are:
1. The ADS listed as the inventor’s given name [Dabus] and has the family name (“invention generated by artificial intelligence”);
2. A substitute statement under 37 CFR 1.64 containing the same information executed by “Stephen Thaler” who was identified as both the legal representative of DABUS and the applicant;
3. A Statement identifying Mr. Thaler as the assignee;
4. An executed assignment assigning the DABUS interest in the invention to Mr. Thaler who executed it on behalf of BABUS as legal representative and on behalf of himself as the assignee;
5. A brief letter was submitted clarifying that the invention was conceived by a "creativity machine" named "DABUS" and it should be named as the inventor in the '350 application.
The USPTO issued a Notice to File Missing Parts indicating that the ADS “does not identify each inventor by his or her legal name.” A first petition was filed requesting that the Notice be vacated as unwarranted which was denied. A request for reconsideration was filed which resulted in the current decision.
The Decision goes through the Title 35 and notes it consistent use of terminology indicating an inventor must be an individual including:
The Decision also cites to the Univ. of Utah v. Max-Planck-Gesellschafl zur Forderung der Wissenschaflen e. V, 734 F.3d 1315, 1323 (Fed. Cir.2013), where the Federal Circuit sated:
The inventors of a patent are “the individual or, if a joint invention, the
individuals collectively who invented or discovered the subject matter of the
invention.” 35 U.S.C. § 100(f). It is axiomatic, that inventors are the individuals that conceive of the invention:
Conception is the touchstone of inventorship, the completion of the mental part of invention. It is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice. Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. [Conception] is a mental act. ...
Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed.Cir.1994) (internal quotation marks and citations omitted). To perform this mental act, inventors must be natural persons and cannot be corporations or sovereigns.
Interestingly, the USPTO did [not] cite to Article I section 8 which authorizes the grant of exclusive rights to inventors, a term in 1790 equated to individuals. Nor did the USPTO reference the Copyright Compendium § 313.2 where the Copyright Office states that it “will not register works produced by nature, animals, or plants.” It is the Copyright Office’s position that an author is a human being, § 313.2,
The Petitioner asserted that BABUS was not created to solve any specific problem nor trained on any special data but arrived at the invention itself. This is different from the usual AI implementations in pharma where the AI is trained with a view to allowing it to pick out patterns from data sets which someone has determined might lead to a useful invention.
For AI assisted inventions in pharma the AI is currently simply a skilled pair of hand assisting the researcher in culling thru information to arrive at one or more possible targets making the researcher an inventor. Under this decision failing to identify to the AI as a co-inventor would not be an error, indeed under the statute it would be an error to name the AI.
Click here for USPTO Decision