IP Stakeholders’ Divergent Views on Inventorship of AI-Generated Inventions

The U.S. Patent and Trademark Office (USPTO) recently held two public listening sessions to seek stakeholder input on the current state of AI technologies and inventorship issues arising from inventions that are enabled by generative AI technologies. Prior to these listening sessions, the USPTO published a Federal Register Notice requesting comments from stakeholders on AI and inventorship, and speakers at the listening sessions were requested to provide comments on one or more questions on AI inventorship posed in the Federal Register.

Discussions at the West Coast Listening Session, held on May 8, 2023 at the Stanford Law School, made it clear that there is very little consensus in the patent community on the state of AI technologies and whether AI could (or should) be considered an inventor or a joint inventor of AI-generated inventions. While most speakers agreed that all inventions, including those generated by AI, should be protectable for the U.S. to maintain its competitive edge in the global economy, opinions varied on how inventions generated by AI should be patent protected in view of the Federal Circuit’s decision in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022) that an inventor must be a natural person.

First, there were differing views on the state of AI technologies. Some commentators, mostly from academia, opined that AI has progressed so far that it can independently—without human intervention—generate inventions, and that AI should be listed as an inventor of such inventions in patent applications. Many technologists and patent practitioners, on the other hand, commented that AI in its current form is simply a tool that assists with innovation; it does not conceive new ideas and is thus not an inventor.

Second, commentators who opined that AI is contributing as a sole or joint inventor urged that current inventorship laws and regulations should be revised so that AI could properly be named as an inventor in patent applications. Those commentators further cautioned that without revised laws allowing the naming of AI as an inventor, valuable inventions generated by AI will not be patent protected, which in turn will hurt U.S. leadership in innovation and technology development. Other commentators opined that existing laws are sufficient to protect AI-generated inventions because those inventions are indeed conceived by human beings, and that inventorship should be attributed to the human beings who use the AI tools to assist innovations.

If it is correct, as some stakeholders have indicated, that certain AI technologies are already contributing at the level of a sole or joint inventor in some inventions, then Congress has to act to change existing laws on inventorship, so that such AI-generated inventions may be patent protected. Failure to make such changes would render an entire class of innovation patent ineligible in the U.S. Alternatively, innovators should consider protecting such inventions as trade secrets in lieu of patent protection.