Why an Intelligent Machine Can't Be an Inventor, at Least for Now
Hogan Lovells partner Celine Crowson says the USPTO's recent inventorship decision was compelled by the patent statutes. In time, Congress may need to rethink them, she says.
May 01, 2020 at 12:03 PM
5 minute read
Andrei Iancu, director of the U.S. Patent and Trademark Office, has been taking active steps to reconsider intellectual property rights with regard to artificial intelligence. Last summer the agency solicited public comments on the subject, including how to properly credit inventorship when a machine contributes to the conception of an invention. Iancu has indicated that the USPTO will issue a report later this year.
But as current U.S. law stands, machines cannot be named inventors. In a decision made public this week, the USPTO's deputy commissioner for patent examination policy formally rejected a patent application organized by The Artificial Inventor Project. The project argues that AI machines are already "conceiving" inventions without human intervention, and that clear rules are needed on whether they can be patented and who should own them.
The National Law Journal spoke with Celine Crowson, who's in charge of Hogan Lovells' intellectual property, media and technology group for the Americas, for her perspective on this decision.
NLJ: What next steps are available to the applicant here?
A. They do have the right to appeal. They could appeal to a federal court.
It's interesting, too, that the USPTO has a dedicated artificial intelligence page on its website. They've issued notices seeking public comment on IP protection as it relates to AI.
Q. Yes, the USPTO and the director himself seem interested in the subject. But I've read that he doesn't buy that machines are creating independently yet. So is there an argument that machines eventually should be considered inventors, but we're just not there yet technologically?
A. It's a really interesting point. This decision almost acknowledges that the PTO is hemmed in by the way the statute currently reads. [The statute] talks about "an individual." It talks about "whoever [invents]." But when I read this decision, it does in a couple of places maybe cry out for Congress to take a second look and think about whether additional statutory language is necessary in order to fully protect AI inventions.
Q. Is the time right to do that?
A. I think some may be tempted to say, "This decision is right. It's not that important for Congress to look at it. Artificially intelligent machines aren't really conceiving inventions. It's the developers, or the folks who are doing the modeling. So this isn't really a problem." I think, though, that we have to expect that we will get to more sophisticated artificially intelligent machines. And when we get there—maybe it's not in five years, it's in 10 years or longer—this may become more of a practical problem. And that may be the time when there's more of an impetus, maybe a push from technology developers for Congress to take a look and think about how to address the situation.
Q. The decision notes a couple of the policy issues that the applicants have raised, such as does the law, as currently interpreted, cause applicants to be less forthcoming about who the true inventor is. What would you say are the best policy arguments for or against this idea, if machines are creating?
A. One challenge is in the U.S. right now, the applications are typically filed in the name of the inventor, and then that inventor assigns it. Absent an agreement or a regular employment relationship, the inventor owns the technology. So then the problem becomes, can a machine transfer ownership rights? I mean, that sounds like a pretty difficult problem. So there will have to be a different mechanism or approach to dealing with the ownership piece as well. It's not going to be a situation where the statute is amended to say "an individual or a machine." That's not gonna do it.
Q. How will these issues be handled in the meantime?
A. Like with a lot of AI, there's going to have to be written contracts and agreements in place with respect to ownership and liability. There's going to have to be some law developed around that framework as well.
You have a designer of an AI machine. You have someone who's modeling it and testing it. And then you may have that machine be purchased by an entity, like you'd purchase a tractor. Folks are really going to be looking to make sure that the ownership and the liability issues are spelled out in those sales or contractual arrangements. And perhaps the case law will move in a direction where the ownership of the intellectual property and the invention, if that machine really does create something new, that will have to be spelled out in the contract. And when the application is filed, perhaps it's filed in the name of the entity who owns it.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllJudge Rejects Meta’s Plea to Send FTC Antitrust Suit to Trash Heap
SEC Fines 4 Companies $7M for Downplaying Breaches Tied to Massive SolarWinds Hack
DOJ, 8 State AGs Sue RealPage for Alleged Sherman Act Violations in Algorithmic Pricing Scheme
'We're Going to Tear the Barriers Down': Judge Prepares to Open App Market Floodgates on Google
Law Firms Mentioned
Trending Stories
- 1Amazon, SpaceX Press Constitutional Challenges to NLRB at 5th Circuit
- 2Schools Win Again: Social Media Fails to Strike Public Nuisance Claims
- 3Spencer Lawton, Savannah Prosecutor Who Tried ‘Midnight in the Garden’ Case, Dies at 81
- 4Uber Not Responsible for Turning Over Information on 'Dangerous Riders' to Competitor, Judge Finds
- 5Steve Bannon 'We Build The Wall' Fraud Trial Pushed to February 2025
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250