Generative AI-Assisted Patent Inventorship Questions Remain

• Published date: 23 June 2023
• Subject Matter: Intellectual Property, Food, Drugs, Healthcare, Life Sciences, Copyright, Patent, Biotechnology & Nanotechnology
• Law Firm: Jones Day
• Author: Mr Anthony Insogna, Patricia Campbell, Matthew Johnson, Vishal Khatri, Carl Kukkonen III, Emily J. Tait, Lily Zhang and Walter Mostowy

In Short

The Situation: The U.S. Supreme Court recently denied certiorari in Thaler v. Vidal, leaving intact the Federal Circuit's ruling that only human beings, and not artificial intelligence ("AI") systems, can be inventors under U.S. patent law.

The Result: The issue in Thaler was narrow, and the result was relatively noncontroversial. But Thaler left open questions surrounding AI and patent inventorship'issues that will only become more complex as rapid advances in generative AI raise new questions about inventorship in the context of AI-related patents.

Looking Ahead: Companies that use generative AI as part of their innovative processes will need to be strategic and informed so as to preserve patentable subject matter. It will be important to monitor legal developments in this novel and evolving area.

Generative AI has dominated recent headlines, with daily reports touting its ability to create images, art, essays, video scripts, song lyrics, and software. Every positive story seems to be countered by a negative one'whether it is a concern about deepfakes being used for ill purposes or a generative AI system that "hallucinates" facts and resources that are untrue or do not exist.

Nevertheless, generative AI is indeed capable of creating new, functionally useful things'and its capacity to do so will only expand as technology progresses. Indeed, generative AI tools are already being used to identify new therapeutic drugs and formulations, design microchips, and improve AI architectures. These developments present many novel questions for patent law, such as: Who are the properly named inventors of AI-assisted inventions? What written description does an AI-assisted invention require, and what level of detail is sufficient to enable others to make and use the invention? How does the general availability of generative AI affect the level of skill assumed to be possessed by a person of ordinary skill in the art, or POSITA? And what risks come with the use of generative AI to assist in drafting and prosecuting patent applications? This Commentary will discuss the question of inventorship'with future Commentaries delving into some of the other questions.

Article I, Section 8, Clause 8 of the U.S. Constitution says that Congress shall have power "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Recently, Thaler v. Vidal presented the issue of whether an AI system can be named as an inventor on a patent in the absence of a human counterpart. The Federal Circuit held that it cannot'only human beings are able to be inventors under U.S. patent law. Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022), cert. denied (U.S. Apr. 24, 2023). The Supreme Court denied certiorari in Thaler, leaving its holding as settled law at this time. Id.

But Thaler is only the tip of the proverbial iceberg, and it leaves more questions open than resolved. The Federal Circuit...