IPPro Issue 002

Artificial Intelligence
Schuster says that, despite the fact this is an emerging area with real
questions, he hasn’t found any significant discussions about patent
ownership by AI.
But he adds: “There are, however, a set of twin questions that
commonly arise in the area of patents for AI-created inventions”.
Schuster says that the related question of who should own the
patents is also being discussed.
He explains: “I’ve asserted in an upcoming article that, if we decide
to grant these patents, firms who employ AI to invent should own the
resulting patents.”
“First, should patents be granted for computer created inventions,
or should these technologies be free for anyone to use, assuming
they aren’t a trade secret? Second, if such patents are granted, who
should own them?”
Speaking of the first issue, Schuster says that there are compelling
arguments on both sides of the discussion of whether to grant
patents for AI created inventions.
“Professor Ryan Abbott of the University of Surrey believes that the
software owner should secure any patents which arise. Others state
that a party who reviews the AI’s output for patentable inventions
might be the actual inventor and thus, patent owner. Again, the issue
of AI and patent law reaches an unresolved point.”
So with much uncertainty surrounding AI developed inventions and
the resulting patents, how close are we to this reality?
He explains: “Many patent systems are premised upon the idea that
these intellectual property rights are granted to encourage creation
of new technologies.”
“Building from this, some assert that—due to the relatively low cost of
invention via AI—little incentive to engage in AI invention is needed
to offset the expenditure, and therefore, there is no need to grant
patents for these technologies.”
Schuster adds: “In the same vein, some believe that patents for AI
inventions will further patent thickets—technological areas wherein
huge numbers related patents exist that render commercial activity
in the field difficult.”
Schuster says that AI’s are already inventing, yet the US government
doesn’t appear to have any guidance on the matter.
Last year, Schuster filed a Freedom of Information Act request with the
US Patent and Trademark Office (USPTO), seeking all promulgations
or directives to patent examiners, instructing them on how to
examine patent applications listing one or more inventor that is not a
human, including software, computers, and artificial intelligence. The
office told Schuster that it had no relevant information, which he says
indicates a lack of internal guidance on the issue.
Despite the present blackout on this issue, Schuster says he doesn’t
believe this subject will go untackled for long.
“The argument goes that, due to the (relative) ease of AI invention,
significantly more technologies will be created, causing a proportional
increase in patents granted and related growth of patent thickets.”
But Schuster also reveals a counter argument: that refusing to give
patents for AI created inventions encourages lying to the patent office.
“If a company uses AI to invent a particularly valuable commodity and
it is not allowed to secure a patent on it, a difficult choice is created”,
he explains, “it can use the technology in commerce, which affords
the company a brief competitive advantage before others identify
and adopt the invention. Alternatively, it can preclude competitors
from accessing the invention by not employing the technology, which
of course, deprives the company of any market benefit.”
He expounds: “Within the next few years, I believe the issue will come
to the fore through one of several avenues: we might see a patent
application naming an AI inventor, litigants disputing inventorship
who bring up AI, or a proactive amendment to the patent statutes
or USPTO guidelines. It is possible that the issue will come up in
some unexpected manner, but I expect that it will be addressed in the
near future. Hopefully, the issues will have been widely discussed by
that point such that—regardless of what policy is adopted—a wellinformed
decision can be made.”
Will a reactive approach from the US pay off? Last year, David Teece,
director of the Tusher Center for Intellectual Capital Management, UC
Berkeley-Haas, said that the US IP system was “weakened”, leading
to the strengthening of foreign rivals.
“There is, however, a third option: the firm may attempt to secure
a patent by falsely naming a human as an inventor. Under current
policy, at least in the US, such subterfuge is unlikely to be identified,
and potential sanctions to the company for such deceit are relatively
low. Incentives to behave in this manner are not aligned with policies
encouraging candor during patent prosecution.”
Teece said that other countries, especially China, are embracing
stronger IP and transforming themselves into innovation economies.
He said “We have been sleeping while Rome burns. Today, one has a
better chance of getting an injunction in China or Germany or Brazil
then in the US.”
He makes clear that further research needs to be done to determine
the severity of these concerns before an informed policy is set.
Will the US sleep on the future of AI, or will it take the reins and
become the leader of the world? Only time will tell. IPPro
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