The AI-Assisted Invention

• Jurisdiction: United States,Federal
• Law Firm: Venable LLP
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Author: Mr Justin J. Oliver and Joseph B. Cahill
• Published date: 20 February 2023

Generative artificial intelligence (AI) is quickly becoming a major force in the world of technology, with its ability to create new content and even replicate the styles of individual humans, including as a tool used by inventors in the creation of patent-eligible technology. As AI continues to advance, it is raising a host of new legal issues'in particular, intellectual property issues. From questions of ownership and authorship to the use of protected IP in generative AI systems, the legal landscape will need to evolve to keep pace with the rapid development of generative AI.

What Is Generative AI?

Generative AI is a type of artificial intelligence that can create new content based on a set of input training data. This content can take the form of images, text, and audio, and can even be designed to mimic the style of a specific person or group. A popular method by which generative AI operates is by training two neural networks to work against each other, with one network generating content and the other evaluating it to determine how closely it resembles the input training data.¹ As the AI model trains, the generating network becomes increasingly sophisticated and produces a diverse range of outputs. Examples of generative AI systems include Dall‧E (an AI image generator) and ChatGPT (an AI text generator), both projects created by Silicon Valley startup OpenAI. And with generative AI projects continuing to attract capital, the field (and thicket of legal issues) will only grow.

AI Systems Have No Right to Patent Inventorship

In 2022, the Federal Circuit held in Thaler v. Vidal² that AI does not have the right to be the inventor of a patent. The Federal Circuit reasoned that the term "inventor" under the United States Patent Act is construed to require a human inventor.

In May 2020, the USPTO denied patent U.S. Patent Application No. 16/524,350 submitted by computer scientist Stephen Thaler for failure to "identify each inventor by his or her legal name." Thaler named an AI system, Device for the Autonomous Bootstrapping of Unified Science (DABUS), as the sole inventor. Thaler claimed that he did not contribute to the conception of the claimed invention and petitioned the USPTO director to vacate the notice of incomplete application in order to allow for the identification of an AI system as the sole inventor. The USPTO ultimately denied the petitions on the ground that "a machine does not qualify as an inventor." The USPTO looked to the plain reading...