Stakeholders Should Not Miss Congress's Invitation For Feedback On Patent Eligibility

• Published date: 12 October 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Sheppard Mullin Richter & Hampton
• Author: Mr Siraj Husain

The Federal Circuit created controversy in 2020 over its application of the Supreme Court's subject matter eligibility jurisprudence by finding a method of manufacturing an automobile propshaft ineligible for patent protection. See American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 966 F.3d 1347 (Fed. Cir. 2020).

According to the opinion, the claimed method was directed to an application of Hooke's law, and thus patent ineligible. Soon after this decision, members of the Congressional Subcommittee on Intellectual Property asked the USPTO to publish a request for information on the current state of patent eligibility jurisprudence in the United States.

In particular, Senators Thom Tillis, Mazie Hirono, Tom Cotton, and Chris Coons sought to learn how the current jurisprudence has 'adversely impacted investment and innovation in critical technologies,' such as quantum computing, artificial intelligence, and precision medicine. 86 FR 36257.

A recent court decision on whether an AI system can be named an inventor in a patent application provides a compelling reason for stakeholders in the artificial intelligence industry to respond to the request. In Thaler v. Hirshfeld, the United States District Court for the Eastern District of Virginia concluded that an AI system cannot be an 'inventor' under the Patent Act.

The decision confirms that inventions generated by AI are not eligible for patent protection in the United States. See Thaler v. Hirshfeld et al., Civil Action No. 1:20-cv-903-LMB (E.D. Va. September 2, 2021). The question of whether an AI system can be an inventor is now expected to proceed to the Federal Circuit. The utility of such appeal is questionable, however, as the District Court aptly stated 'it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.' Id., 18.

There is no question that AI has helped companies compete more effectively in an increasingly challenging marketplace while also providing significant benefits to society. Already, AI has been deployed to improve patient diagnostics and treatment, reduce workplace injuries, and...