Google® CEO Sundar Pichai demonstrated the capabilities of Google Assistant onstage at Google I/O.1 Triggered by a voice command, the Google Assistant software seamlessly and successfully communicated with a hair salon employee, via a phone call that the software initiated, to book the appointment. Pichai explained that Google Assistant actually “understand[s] the nuances of conversation” by combining natural language understanding, deep learning and text-to-speech technology. This represents a new and less blatantly artificial development in the scope of AI ability.
Google Assistant is among a series of artificial intelligence platforms that came to the forefront with IBM®’s Watson2 and continue to drive innovation, investment, and challenge resolution. As artificial intelligence technology continues to evolve, we see that the output provided by such platforms can be unique. Where the output from a machine programmed computing device was once determined by a pre-coded set based on probabilistic determinations, today a unique output can be created independent of a pre-set code, by AI, based on context, environment, and understanding. Phrased differently, an artificial intelligence platform may invent solutions previously unknown to those skilled in a given field. For viewers of the AI centric HBO® show West World, this progression towards authentic and independent AI actions and products may conjure up dramatic and bombastic thoughts.
A less dramatic but nonetheless interesting question is: When artificial intelligence technology provides a solution that is previously unknown; does the AI platform become the inventor of the corresponding patent rights to the solution? There are a number of applicable considerations when answering this question and they include legal, moral and social considerations. For the purpose of this discussion, we will focus on the legal considerations based on an intellectual property legal framework.
35 U.S.C. § 100 provides the definitions for the patentability of inventions. According to this section, “[t]he term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”3 Barring a philosophical determination of an AI platform being an individual, the limitation of an inventor to an “individual,” as provided in 35 U.S.C. § 100, limits inventorship to humans. It could be argued that the statute uses the word “individual” deliberately instead of opting for a broader word such as “entity” and, thus, the statute is clear regarding an inventor being a human. Although, alternatively, it could also be argued that the statute omits the word “human” and, thus, such an implied limitation is open to interpretation. Further, as provided in the Manual of Patent Examining Procedure section 2137.014 regarding inventorship, the definition for inventorship can be discussed such that:
The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice.5 One must contribute to the conception to be an inventor.6
The language selected by the Federal Circuit includes the words “who” and “person.” Similar to the word “individual,” as recited in 35 U.S.C. § 100, the language used in authoritative cases surrounding an inventorship discussion focuses on human inventorship and, accordingly, against AI inventorship.
Inventorship for AI platforms can also be explored in the context of conception. In 1929, the Court of Customs and Patent Appeals stated that conception is defined as “the complete performance of the mental part of the inventive act” and 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 thereafter to be applied in practice….”7 In 1929, a discussion about machine learning would be limited to improvements to industrial machinery and AI was a term still unknown. Unsurprisingly, the language used in this still-cited decision favors human-only conception. Specifically, the decision recites a “mental part” and “the formation in the mind of the inventor” to describe the conception of an invention; attributes that AI platforms do not associate with.
Both the statutory language in 35 U.S.C. § 100 and the leading case law concerning conception imply that an inventor can only be a human individual with a capacity to form an invention in his or her mind. However, as AI-derived solutions advance in complexity and capability, a more direct legal discussion regarding inventorship is likely to drive a resolution on to the AI inventorship question. Until then, given the recent advances in AI technology8 and in view of the America Invents Act’s9 (AIA) shift to applicant-based rights, patent rights for AI-derived innovation may soon evolve into a sprawling debate over humanity, property ownership rights, and the formation of thought.
 Google I/O Is A Developer Festival That Was Held May 8-10 At The Shoreline Amphitheatre in Mountain View, CA, Google.com, https://events.google.com/io/.
 IBM Developing Computing System to Challenge Humans on America’s Favorite Quiz Show, Jeopardy!, IBM.com, https://www-03.ibm.com/press/us/en/pressrelease/27324.wss.
 35 U.S.C. § 100 (2018).
 MPEP § 2137.01 (9th ed. Rev. 7, Nov. 2015).
 Fiers v. Revel, 984 F.2d 1164, 1168 (Fed. Cir. 1993).
 MPEP § 2137.01 (quoting In re Hardee, 223 U.S.P.Q. (BNA) 1122, 1123 (Comm’r Pat. 1984)).
 Townsend v. Smith, 36 F.2d 292, 295 (C.C.P.A. 1929).
 An AI That Makes Road Maps From Aerial Images, ScienceDaily.com (Apr. 17, 2018), https://www.sciencedaily.com/releases/2018/04/180417130055.htm.
 Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (codified as amended in scattered sections of 35 U.S.C.).
- Where are we now? The Schrems II Decision, One Year Later
- Are You Exposed? Top Three Considerations for your Organization’s Data Privacy Program
- 10 Questions About Patent Prosecution That Every Inside Counsel Should Be Able To Answer for Their Inventors
- Assignor Estoppel: When Can A Party Challenge A Patent They Sold?
- Federal Circuit Invalidation of Targeted Advertising Claims Reaffirms Patent Subject Matter Eligibility Precedent but Recent Petition for Rehearing Looms
- Trademark Modernization Act of 2020 Provides New Tools for Removing Deadwood Trademark Registrations from the Trademark Register
- Advice from Ben Franklin on Choosing Patent Terms
- EagleView Techs., Inc. v. Xactware Solutions: A Cautionary Tale
- Using Opinions of Counsel as a Budgeting Tool
- In Celebration of Earth Day: How Trademark Law Helps The Environment
- July 2021
- June 2021
- May 2021
- April 2021
- March 2021
- February 2021
- January 2021
- December 2020
- November 2020
- October 2020
- August 2020
- July 2020
- June 2020
- May 2020
- April 2020
- March 2020
- February 2020
- January 2020
- November 2019
- October 2019
- September 2019
- June 2019
- April 2019
- February 2019
- January 2019
- October 2018
- July 2018
- June 2018
- May 2018
- April 2018
- March 2018
- February 2018
- January 2018
- December 2017
- November 2017
- October 2017
- August 2017
- July 2017
- May 2017
- April 2017
- March 2017
- February 2017
- January 2017