US Patent Office: AI is all well and good, but only humans can patent things


The question of where AI fits within legal personhood is not as simple as it seems (i.e. “nowhere”) – but the U.S. Patent Office and of Trademarks declared today that, as with other intellectual property rights, only a person can receive its legal personality. official protections.

The news came via “guidance,” that is, an official policy but not an ironclad rule, which should soon be entered in the Federal Register. The guidance document (PDF) states that for clear legal reasons, as well as the idea that, fundamentally, “patents function to encourage and reward human ingenuity”, only “natural humans” can obtain patents.

This is not necessarily obvious when we think, for example, of how corporations are considered persons for some legal purposes, but not for others. Not being citizens, they cannot vote, but being legal entities, their speech is protected by the First Amendment.

A legal question has arisen: when a patent is evaluated for allocation to an “individual,” whether that individual must be a human being or whether an AI model can be an individual. Precedent has made it clear (the guidelines summarize) that individual means human unless expressly stated otherwise. But it remained an open question whether and how to cite or attribute an AI-assisted invention application.

For example, if a person designed an AI model and that AI model independently designed the form and mechanism of a patentable device, is that AI a “co-inventor” or a “co- inventor”? Or, perhaps, does the lack of a human inventor in this case prevent this device from being patented?

The USPTO guidance makes clear that while AI-assisted inventions are not “categorically unpatentable,” the AI ​​systems themselves are not individuals and therefore cannot be inventors, legally speaking. . Therefore, it follows that at least one human being must be named as the inventor of a given claim. (There are actually some interesting parallels with the famous “Monkey selfie” affair – where the monkey taking the photo obviously can’t get copyrights, because copyrights have to be owned by legal entities, and monkeys, while they are many things, are not. )

However, they must demonstrate that they have “contributed significantly” to the invention, which is not necessarily simple. Browsing through the document on how this is defined is actually quite an interesting read:

Simply recognizing a problem or having a general goal or research plan to pursue does not rise to the level of design. A natural person who only presents a problem to an AI system may not be a true inventor or co-inventor of an invention identified from the results of the AI ​​system. However, a significant contribution could be made by how the person constructs the prompt based on a specific problem to obtain a particular solution from the AI ​​system.

…A natural person who merely recognizes and appreciates the result of an AI system as an invention, in particular when the properties and usefulness of the result are obvious to those skilled in the art, does not is not necessarily an inventor. However, a person who exploits the results of an AI system and makes significant contributions to create an invention may be a true inventor.

Maintaining “intellectual dominance” over an AI system does not, in itself, make a person an inventor of inventions created through the use of the AI ​​system.59 Therefore, a person who Simply owning or supervising an AI system used in the creation of an invention, without making significant contributions to the design of the invention, does not make that person an inventor.

In other words, there is a sort of reasonableness standard here that anyone filing a patent application would already be aware of, but which, in the context of AI, doesn’t have much precedent to refer to. This is why advice exists; No one now has to worry about whether, because someone “maintains intellectual dominance” over an AI, all of its productions count as inventions of its own.

The USPTO is careful to clarify that it is in no way attempting to define or limit what AI does or is, or how people should use it. This is simply an application of existing law and precedent to new technology. If Congress passed a law tomorrow stating that AI counts as a human being for intellectual property purposes, the USPTO would undo all of that and come up with new guidelines for granting AI patents. But until then, AI is still just software and it’s humans whose work is supposed to be rewarded and protected.

You can read the full guidance document here.


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