Inventing With AI
| Jurisdiction | United States,Federal |
| Law Firm | Goodwin Procter LLP |
| Subject Matter | Intellectual Property, Litigation, Mediation & Arbitration, Technology, Patent, Trademark, Trials & Appeals & Compensation, New Technology |
| Author | Ms Ashleigh Nickerson and Martin Gomez |
| Published date | 23 October 2023 |
Only inventions conceived by humans are eligible for patents ' but humans can use AI as a tool in the process of invention.
AI is increasingly being incorporated into the process of invention, including in areas that involve writing software, developing new materials, and discovering new compounds. As discussed in a recent piece about how AI is transforming the drug development process, this raises complex legal and commercial issues, particularly related to intellectual property and inventorship.
It is clear under current US law that inventions conceived solely by AI systems cannot be patented. But it also seems increasingly clear that AI can be used as a tool in the process of invention without rendering an invention ineligible for a patent ' if a human conceived the idea for the invention.
In this piece, we explain why and outline the requirements inventions must meet to qualify for patents, even when AI assists in the process.
Ideas solely conceived by AI are not protected under patent law
Patent eligibility in the United States is based on Section 101 of the US Patent Act and related judicial decisions. Lawmakers and the courts have repeatedly indicated that only humans can qualify as inventors.1
The Patent Act expressly states that "[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."2 The Federal Circuit Court of Appeals explicitly stated in 1993 that "only natural persons can be 'inventors.'"3
Recent decisions applied the principle in cases involving AI. In 2020, the US Patent and Trademark Office (USPTO) denied two petitions by Stephen Thaler that named an AI platform (the Device for the Autonomous Bootstrapping of Unified Sentience, or DABUS) as the sole inventor ' precisely because only "natural persons" can be inventors under the US Patent Act.4 The US District Court for the Eastern District of Virginia upheld the USPTO's decision,5 and the US Court of Appeals for the Federal Circuit affirmed the holding.6
In its decision, however, the appeals court stated that the case did not present "the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection."7
Inventions conceived by humans using AI as a tool likely can be patented
Using AI as a tool in the process of invention should not in itself render an invention ineligible for a patent ' if a "natural person" contributed to the...
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