Kaelyn R. Knutson, Associate Attorney at Kinney & Lange, P.A., Minneapolis, MN.
Three years ago found me putting the finishing touches on my law student note—titled “Anything You Can Do, AI Can’t Do Better: An Analysis of Conception as a Requirement for Patent Inventorship and a Rationale for Excluding AI Inventors”[1]—for publication in Cybaris®, An Intellectual Property Law Review. At the time, I commented that AI had become ubiquitous in many industries, but I certainly didn’t fully appreciate or anticipate the rapid developments in artificial intelligence technologies that would take place over the next three years. At least from a popular perspective, the AI landscape has changed significantly since 2020, as several new AI technologies have emerged and swept into our lives.
A notable facet of these developments is that where recognizable AI technologies have tended to have fleeting surges in popularity as novelties or have been popular only in niche settings, one new technology—OpenAI’s ChatGPT[2]—seems to be making a more pervasive impact than preceding AI technologies on both our home and work lives. The unprecedented capabilities of ChatGPT are exciting but have also set alarm bells ringing.
Somewhere along the parade of horribles potentially arising from the introduction of progressively more powerful AI technologies is a reprisal of the question I attempted to address back in 2020—whether AI can ever be properly listed as an inventor on a patent application. Returning to ChatGPT as an example, ChatGPT as it exists in its current form probably isn’t truly capable of inventing due to inherent limitations in the model. Large Language Models like ChatGPT are trained on massive quantities of text data to infer relationships between words and predict words in a sequence.[3] That is, ChatGPT doesn’t actually understand the real-world context of the words it outputs; it only “knows” the world as pieces of text. Nonetheless, ChatGPT is capable of producing unique textual outputs that theoretically could encompass a novel idea. But would that be sufficient to make an AI an inventor for patent purposes? Arguably not, based on the conception element of inventorship in U.S. patent law, but that answer still leaves many questions unresolved.
The Federal Circuit answered this question on slightly different grounds in August of last year when it held that “an ‘inventor’ must be a human being” in Stephen Thaler’s appeal from a consistent district court ruling after the USPTO refused to examine two patent applications Thaler had filed on behalf of the AI “DABUS,” each of which listed DABUS as the sole inventor.[4] In Thaler, the Federal Circuit relied primarily on statutory interpretation of the term “individual” in reaching its holding.[5] As it stands, Thaler’s petition for writ of certiorari to the U.S. Supreme Court[6] was denied at the end of April[7], although Thaler also has numerous parallel cases pending in other jurisdictions.
Policy discussions and public discourse about the role of AI various contexts are ongoing. Recently, a number of AI tools (such as Lensa,[8] DALL-E 2,[9] and Stable Diffusion[10]) for generating or altering images by incorporating elements from existing images sparked widespread outrage among digital artists and creators, in part due to concerns of rampant copyright infringement.[11] In the patent realm, USPTO Director Kathi Vidal shared a blog post on April 18 that explores the growing role of AI in innovation and raises several questions about what the bounds of that role should look like, particularly with respect to patent contributions.[12] The USPTO also published a request for comments on AI and inventorship that is set to close on May 15.[13]
All things considered, I think the more interesting consequence of continuing developments in AI technologies is not so much encompassed by the question of whether an AI can be listed as an inventor but rather by the broader question of how AI involvement in patenting interacts with the underlying policies of patenting to incentivize innovation. In my 2020 paper, I touched briefly on the looming issue of otherwise patentable inventions potentially having no proper inventor, depending on the level of contribution by an AI.[14] If an AI were able to originate an inventive idea, then who is the inventor? (The AI itself? The person who uses the AI as a tool? The person who created the AI? The person who developed the training data for the AI? Does there need to be some sort of agreement in place between these parties?) And, taking a step back to look at the bigger picture, perhaps the most critical question is who among these options should be considered the inventor to best support the goal of furthering innovation and prevent disincentivizing the use of AI in contexts where it is extraordinarily valuable.
Ultimately, the issue of proper patent inventorship in cases involving significant AI contribution is not fully resolved, and this issue presents a challenging thought exercise about the role AI should play going forward.
[1] Kaelyn R. Knutson, Anything You Can Do, AI Can't Do Better: An Analysis of Conception as a Requirement for Patent Inventorship and a Rationale for Excluding AI Inventors, 11 Cybaris®, issue 2, art. 2 (2020), https://open.mitchellhamline.edu/cybaris/vol11/iss2/2 [https://perma.cc/EKA8-SBTS].
[2] Introducing ChatGPT, https://openai.com/blog/chatgpt [https://perma.cc/9LPZ-AZM8 ].
[3] Molly Ruby, How ChatGPT Works: The Model Behind The Bot, https://towardsdatascience.com/how-chatgpt-works-the-models-behind-the-bot-1ce5fca96286 [https://perma.cc/4MAS-QXFM].
[4] Thaler v. Vidal, 43 F.4th 1207, 1210, 1212 (Fed. Cir. 2022).
[5] Id. at 1211-1213.
[6] Aaron Gin, Petition for Writ of Certiorari filed in DABUS AI-as-Inventor Case, https://www.jdsupra.com/legalnews/petition-for-writ-of-certiorari-filed-3029123/#:~:text=Dr.,%22inventor%22%20to%20human%20beings [https://perma.cc/HJ5M-ZSZY].
[7] Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), cert. denied, 598 U.S. ___ (U.S. Apr. 24, 2023) (No. 22-919).
[8] Lensa is an all-in-one image editing app that takes your photo to the next level, https://prisma-ai.com/lensa [https://perma.cc/7KJL-NZ6D].
[9] DALLE-E2, https://openai.com/product/dall-e-2 [https://perma.cc/9R8J-FHNU].
[10] Stable Diffusion Online, https://stablediffusionweb.com/ [https://perma.cc/XJ9P-G92J].
[11] Ella Feldman, Are A.I. Image Generators Violating Copyright Laws? https://www.smithsonianmag.com/smart-news/are-ai-image-generators-stealing-from-artists-180981488/ [https://perma.cc/C7WG-XFLF].
[12] Kathi Vidal, With artificial intelligence speeding the innovation process, what does that mean for invention and a properly balanced patent system? Director’s Blog: the latest from USPTO Leadership (Apr. 18, 2023) https://www.uspto.gov/blog/director/entry/with-artificial-intelligence-speeding-the [https://perma.cc/D8MF-NY57].
[13] Request for Comments Regarding Artificial Intelligence and Inventorship (Feb. 14, 2023), U.S. Patent & Trademark Office, PTO-P-2022-0045, 88 FR 9492, 9492–95 (Feb. 14, 2023) https://www.federalregister.gov/documents/2023/02/14/2023-03066/request-for-comments-regarding-artificial-intelligence-and-inventorship.
[14] Knutson, supra note 1 at 27-28.