Not surprisingly, comments and critiques of GenAI tools have focused on the intellectual property that governs the validity and enforceability of creative works of authorship – copyrights. But while public debate has been occupied by GenAI’s impact on copyright, many have ignored, or paid little attention, to GenAI’s potential to challenge another fundamental form intellectual property: patents. Just as GenAI has shown that it has the capacity to act as an author of a creative work, there is no reason to believe that GenAI cannot, or will not seek, to innovate in areas patentable.
This article briefly explores the major issues presented by GenAI in the context of patent law, with GenAI having the power to create (and undermine) patented technologies. Although questions remain regarding the patentability of the neural engines underlying GenAI tools, or the GenAI tools themselves, this topic is worth exploring in a future article.
GenAI as an innovator
Researchers at Carnegie Melon University recently announced that they have developed an improved process for manufacturing electric vehicle (EV) batteries using AI. Beyond the electric vehicle industry, many other sectors believe that AI will save millions of dollars and create many profitable improvements. For example, the pharmaceutical industry estimates that AI could shave years off research related to drug development and delivery methodologies, justifying an incredible investment of around $50 billion for big pharma.
Unbeknownst to these researchers, they have likely created a situation that falls into a gray area of patent law. Administrative agencies and federal courts have grappled with inventorship and GenAI. Namely, each of these organizations considered whether a GenAI tool deserved recognition as an “inventor” on patent applications and issued patents.
Under current patent law, an inventor must be a human inventor. This issue has been settled – for now – in a decision by the Court of Appeals for the Federal Circuit, which is the appeals court that has exclusive jurisdiction over patent appeals. In July 2019, Dr. Stephen Taler filed two patent applications with the United States Patent and Trademark Office (USPTO), one for a “neural flame” and the other for a “fractal container.” Dr. Thaler cited a “Device for Autonomous Initiation of Unified Science” or “DABUS” as the sole inventor. DABUS has been described simply as a “set of source or programming code and software.” In short, DABUS leverages generative artificial intelligence and neural mapping.
After the USPTO rejected Thaler’s applications on the grounds that an inventor must be a human inventor rather than a computer, the rejection was appealed all the way to the Federal Circuit. The Federal Circuit sided with the USPTO, holding that the Patent Act expressly contemplates that inventors must be “natural persons.”
In light of this decision, the USPTO has twice requested public comment on the intersection of AI, patentability, and inventorship. Even if the USPTO maintains the position that an inventor must be “human,” other questions will continue to be asked in circumstances in which a GenAI tool acts more like a collaborator. Although current law makes clear that a computer program, such as DABUS, cannot be listed as the sole inventor, the USPTO and the courts have not fully appreciated the circumstances under which a scientist or engineer uses a tool GenAI to refine, refine or propose patentable innovations in the art world published or disclosed before a patent application filing date.
GenAI as a tool to attack the validity of a patented technology
Leaving aside the question of inventiveness, GenAI also presents itself as a means of making obvious everything that the GenAI tool can invent, given the prior art available to it.
To be patentable, an invention must meet several statutory criteria. An invention must be, among other things, eligible subject matter (35 USC § 101), new or unanticipated (35 USC § 102), and non-obvious (35 USC § 103). Obviousness is perhaps the most esoteric of the criteria mentioned above, requiring a USPTO (or federal district court) examiner to evaluate whether an invention is “obvious” from the point of view of ‘a person having ordinary skill in the field of the claimed invention (often called POSITA). The POSITA is generally considered a mythical person who is presumed to have, at his fingertips, all the known and relevant art at the time a patent application was filed with the USPTO. In many ways, GenAI embodies the mythical POSITA, in that it has the ability to explore and retrieve all information made public on the Internet, such as research articles, white papers, scientific conference presentations and all internationally granted patents and published patents. applications. By leveraging the power of GenAI in a particular field, GenAI’s innovative results could serve as a barrier to claimed inventions. If GenAI can achieve the claimed invention with the knowledge it has, then a human inventor should not be worthy of patent recognition.
Another consideration is that GenAI will most certainly become a tool in patent litigation, whether used to locate and/or evaluate potential prior art, to narrow down the prior art references to review, or even to explain how several references can be combined to demonstrate the obvious (the other side of the coin mentioned above). For example, GenAI could provide different examples of prior art combinations that an expert can choose from and appropriate. It is also possible that the Federal Rules of Civil Procedure (and often the court’s protective order for a given patent infringement case) may need to be revised to permit discovery of any expert reports prepared using AI-based tools – a topic often considered off limits.
It is not difficult to imagine that the use of GenAI, without safeguards in the patent context, could result in significant changes, potentially far from the validity of patents, due to the ability to obtain and sort through large amounts of information like never before.
For now, a GenAI tool should probably be viewed as another development tool available to an innovator or team of collaborators. Whether it’s helping with calculations or simulations, or facilitating optimizations, GenAI can move you forward to a certain point, allowing all other inventive designs to be completed by humans.
Using GenAI or not, what is true is that companies must always demonstrate good hygiene when it comes to intellectual property. Companies should, early and often, review their technological innovations and invention disclosures, clarify how potentially patentable subject matter is generated (e.g., through the use or not of AI programs), and file filings. patent applications relating to this patentable subject matter. matter. Additionally, just as companies conduct such internal reviews, they must also remain vigilant about disclosing their undisclosed inventions (or proprietary trade secrets) through the use of a public AI tool , as such disclosure could be considered a “public disclosure” without appropriate authorization. bodyguard.
GenAI has the power to revolutionize the creative and technological landscape. But, like any new technology, it must be used responsibly and evaluated in conjunction with alternative technologies that could produce equal, if not better, inventive results.