AI As Inventor Or Author - Developing Trends

• Published date: 27 June 2023
• Subject Matter: Intellectual Property, Technology, Copyright, Patent, New Technology
• Law Firm: Baker Botts
• Author: Mr Paul A. Ragusa and Nick Palmieri

Artificial intelligence (AI) has made recent headlines for developing inventions, generating artwork, producing written works, and even preparing tax returns. These diverse uses of AI, including to create utilitarian techniques and original expressive works, has led to a debate regarding whether and when AI can become an inventor or author, along with the corresponding intellectual property rights accompanying this designation.

This article examines a prevalent (and persistent) example of attempted AI inventorship, DABUS, which was listed as the inventor on several patent applications around the world, but thus far with limited success. The global response, as well as the response by various U.S. government entities, will inform upon the current state of AI inventorship.

Recent developments under copyright law, which examines whether an AI can be considered an author, likewise are addressed.

Finally, this article reviews the recent notice from the U.S. Patent and Trademark Office (USPTO) published in the Federal Register seeking comments from industry stakeholders on the role that AI currently plays in the "invention creation process." Although the USPTO has made clear its position on AI inventorship in the past, the notice suggests continued consideration of this important problem.

listed as the only inventor the AI "Device of Autonomous Bootstrapping of Unified Sentience" also known as "DABUS."¹ The USPTO rejected these applications, explaining that DABUS was not a "valid" inventor, and the issue of inventorship made its way to the U.S. Court of Appeals for the Federal Circuit.²

In Thaler v. Vidal, ³ the Federal Circuit affirmed the USPTO's conclusion that DABUS was not a valid inventor under the patent laws of the United States. The court supported its decision through relevant statutory text, case law, and common dictionary evidence. First noting that the Patent Act "expressly provides that inventors are 'individuals,'"⁴ the court sought an appropriate definition of "individual" because it was not defined within the Patent Act. Looking outside the Patent Act, the court found that the "Supreme Court has explained, when used '[a]s a noun, "individual" ordinarily means a human being, a person.'"⁵ The Federal Circuit supported this view via extrinsic evidence, in the form of common dictionary definitions of "individual" to be "a single human being."⁶ The court looked to its own precedent that determined an inventor must be a "natural person," as opposed...