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In its August 5, 2022 affirmance of the district court’s grant of summary judgment, the Federal Circuit in Thaler v. Vidal ruled that the Patent Act unambiguously and directly answers the question of whether an AI software system can be listed as the inventor on a patent application. Since an inventor must be a human being, AI cannot be.

Judge Stark’s first authored precedential opinion since confirmation to the Federal Circuit aligns the U.S. position on whether AI can be listed as an inventor on a patent application with that of other major jurisdictions. Left for another day are questions such as the rights, if any, of AI systems, and whether AI systems can contribute to the conception of an invention.

PTO and Litigation Background of the DABUS Patent Applications

In July 2019, two patent applications were filed in the United States Patent and Trademark Office (PTO) that identified an AI system called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) as the sole inventor and Stephen L. Thaler as the Applicant and Assignee. DABUS, which was characterized as “a particular type of connectionist artificial intelligence” known as a “Creativity Machine” during prosecution and as “a collection of source code or programming and a software program” before the U.S. District Court for the Eastern District of Virginia, allegedly generated the subject matter of the two patent applications.

The filed patent applications specifically stated that the inventions were conceived by DABUS, and that DABUS should accordingly be named as the inventor. The PTO subsequently issued Notices stating that the applications did not identify each inventor by his or her legal name. In response to filed Petitions requesting that the PTO vacate the issued Notices, the PTO issued Petition Decisions refusing to vacate, explaining that a machine does not qualify as an inventor under the patent laws, and providing additional time to identify inventors by their legal name to avoid abandonment of the applications.

Thaler then sought judicial review under the Administrative Procedure Act in the Eastern District of Virginia, requesting an order compelling the PTO to reinstate the DABUS patent applications, and a declaration that a patent application for an AI-generated invention should not be rejected on the basis that no natural person is identified as an inventor. After briefing and oral argument, the district court issued an order denying Thaler’s requested relief and granting the PTO’s motion for summary judgment, recognizing the Federal Circuit’s consistent holdings under current patent law requiring inventors to be natural persons.…

Continue Reading Federal Circuit Rules That Under The Patent Act An Inventor Must Be Human: So What Can Be Done To Patent AI Inventions?

The USPTO issued a Report in October 2020 titled Inventing AI: Tracing the diffusion of artificial intelligence with U.S. patents, along with supplementary material that describes the methodology and scope of patent related data used in the Report. Following a first report also issued in October 2020 that pertains to AI and IP…

On October 6, 2020, the U.S. Patent and Trademark Office (USPTO) published a report titled Public Views on Artificial Intelligence and Intellectual Property Policy. The report summarizes the nearly 200 comments received in response to patent-related questions regarding AI set forth in a request for comments (RFC) issued by the USPTO in August 2019 and non-patent IP questions set forth in an October 2019 RFC.

This post focuses on Part I of the report, which summarizes the comments received in response to the first RFC. Part II of the report pertains to the second RFC.…

Continue Reading Covington Artificial Intelligence Update: USPTO Releases Report on Artificial Intelligence and Intellectual Property Policy

The U.S. Patent and Trademark Office (USPTO) held its Artificial Intelligence: Intellectual Property Policy Considerations conference on January 31, 2019. The conference featured six panels of speakers, including policy makers, academics, and practitioners from Canada, China, Europe, Japan, and the United States. As stated by USPTO Director Iancu during his introductory remarks, the purpose of the conference is to begin discussions about the implications that artificial intelligence (“AI”) may have on intellectual property law and policy. In this post, we provide an overview of Director Iancu’s Introductory Remarks and of three of the conference panels that addressed several current and forward-looking issues that will impact patent law and society at large.

Opening Remarks by Director Iancu

The Director noted that governments around the world are adopting long-term comprehensive strategies to promote and provide leadership for technological advances of the future, and that America’s national security and economic prosperity depend on the United States’ ability to maintain a leadership role in AI and other emerging technologies.

The USPTO is using AI technology to increase the efficiency of patent examination. For example, the USPTO has developed and is exploring a new cognitive assistant called Unity which is intended to allow patent examiners to search across patents, publications, non-patent literature, and images with a single click. The Director concluded by stating that one of his top priorities is ensuring that the U.S. continues its leadership when it comes to innovation, particularly in the emerging technologies such as AI and machine learning.
Continue Reading Artificial Intelligence and the Patent Landscape – Views from the USPTO AI Intellectual Property Policy Considerations Conference

On November 1, the European Patent Office’s (EPO) updated Guidelines for Examination went into effect. Of note, the Guidelines include a new subsection on “artificial intelligence and machine learning.” This is the latest milestone in a recent world-wide wave of interest in patenting in the field of artificial intelligence. However, the legal framework for patenting such inventions is uncertain, evolving, and not uniform across the globe. This post addresses the current state of artificial intelligence patenting in Europe and the United States in particular, and offers key takeaways that practitioners should consider when drafting and prosecuting patent applications in this field.

Background on Artificial Intelligence and Machine Learning

For context, artificial intelligence (“AI”) may be summarized as the simulation of intelligent human behavior by machines. A subcategory of AI, machine learning (“ML”), refers to ability of systems to learn from data and improve from experience automatically—in other words, without being explicitly programmed. In practice, the beneficial results delivered by AI and ML are rooted in algorithms and mathematical models. These features, however, have generally been excluded from patentability in both Europe and in the United States. While AI and ML hold promise as the next breakthrough technology, this legal precedent raises concerns about the ability to secure and maintain patents in this field.
Continue Reading AI Update: Considerations for Patenting Artificial Intelligence in Europe and the United States

On April 19, 2018, the U.S. Patent and Trademark Office released a Memorandum to the Patent Examining Corps regarding changes in examination procedure pertaining to subject matter eligibility in view of the Federal Circuit’s Berkheimer v. HP Inc. decision. Berkheimer held that when a claim is directed to an abstract idea, the question of whether a claim element or combination of elements is “well-understood, routine and conventional to a skilled artisan in the relevant field”—which bears on whether a claimed abstract idea can be transformed into a patent-eligible application—is a question of fact.
Continue Reading How You Can Utilize the USPTO’s Berkheimer Memorandum During Application Drafting, Prosecution and Appeal

On April 2, 2018, the U.S. Patent and Trademark Office released a memorandum to the Patent Examining Corps regarding recent subject matter eligibility decisions issued by the Federal Circuit. The memorandum discusses two recent decisions that found claims that improve computer technology are directed to patent-eligible subject matter rather than to an ineligible abstract idea. The memorandum and decisions are instructive for practitioners who draft patent applications, confront subject matter eligibility challenges or respond to USPTO rejections under 35 U.S.C. § 101.

In Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the Court (Dyk, Linn, Hughes) found no error in the district court’s subject matter eligibility determination and unanimously held that the claims were patent-eligible under § 101 because they improved computer technology by protecting users against previously unknown viruses and enabled more flexible virus filtering. The invention recited specific steps to accomplish the desired result, and was a non-abstract improvement over traditional computer functionality and virus scanning techniques which only recognized the presence of previously-identified viruses.

Relying on recent Federal Circuit precedent, the Court stated that in cases involving software inventions, the inquiry into whether the claims are directed to an abstract idea often turns on whether the claims focus on a specific asserted improvement in computer capabilities. The claims at issue in Finjan are directed to a method of providing computer security by scanning a downloadable program for suspicious code such as viruses, and attaching the results of the scan to the downloadable program in the form of a security profile. The Court adopted a district court claim construction in finding that the behavior-based virus scan approach improved computer functionality because it determines whether the program performs hostile or potentially hostile operations.…

Continue Reading U.S. Patent and Trademark Office Releases Memorandum on Recent Subject Matter Eligibility Decisions

by Morag Peberdy and Christina Helden

On 19 March 2013 the India’s Intellectual Property Appellate Board (IPAB) released its written judgment upholding the Controller of the Indian Patent Office’s decision to grant Natco Pharma Ltd a compulsory licence under Bayer A.G.’s patent for its anti-cancer drug Nexavar.  Section 84(1)(a)–(c) of the Indian Patents Act 1970 sets out three conditions for the grant of a compulsory licence.  The IPAB confirmed that although any one of these is sufficient, all three requirements were in fact met in this case, namely Bayer had not: (a) satisfied the reasonable requirements of the public; (b) made the patented invention available at a reasonably affordable price; or (c) worked the patented invention in India.

Although the IPAB was not as rigid in its views on local working as the Controller, this aspect of the judgment is most likely to raise concern internationally, and has implications across all industry sectors.  The Controller took the stance that for a patent to be worked locally, product must be manufactured in India.  The IPAB held that the local working requirement needs to be considered on a case-by-case basis.  However, if product is merely imported, the onus is on the patentee to show why its product could not be manufactured locally.  As Bayer did not manufacture Nexavar in India nor provide evidence as to why it could not manufacture this particular drug in India, it failed the local working requirement.  The IPAB considered WTO’s Trade Related Aspects of Intellectual Property Rights Agreement (TRIPs) but found no inconsistency.  Others are likely to disagree, and to view the IPAB’s interpretation of s84(1)(c) as being protectionist and incompatible with the fundamental principle of non-discrimination that underpins TRIPs. …
Continue Reading India Upholds its First Compulsory Licence

A bill has been introduced in Congress that would permit prevailing defendants in patent infringement suits to recover litigation costs and attorneys’ fees.

The Saving High-Tech Innovators from Egregious Legal Disputes (“SHIELD”) Act was introduced on February 27 by Congressmen Peter DeFazio (D-OR) and Jason Chaffetz (R-UT).  The bill would provide for the award of full litigation costs to a prevailing party asserting invalidity or noninfringement in a patent action.  In order to recover fees, the party asserting invalidity or noninfringement would first have to obtain a judgment that the party alleging infringement was not (1) the original inventor, (2) exploiting the patent, or (3) a university or technology transfer organization.
Continue Reading SHIELD Act Seeks to Shift Litigation Costs in Patent Suits Brought by Non-Practicing Entities

After more than 40 years of discussions, the European Parliament today voted in favour of the “EU patent package,” hot on the heels of the European Council’s approval yesterday.  The EU patent package will create a Unitary EU Patent i.e. a uniform patent which will have equal effect and will be granted, transferred and enforced in a unitary way in most of Europe.  Unitary EU Patents will be granted through the existing European Patent Office, but a new court system will be set up to enforce these patents.

The Unitary EU Patent will, in time, replace the current system of European Patents which – after grant – operate as independent national patents in up to 38 countries.

Today’s vote represents a major political breakthrough, and it is now highly likely that the package will be implemented, although the international agreement creating a unified patent court still requires ratification by individual European countries in order to come into effect.  The EU patent package will enter into force on 1 January 2014 or after 13 European countries have ratified it, whichever is the latest.  The 13 ratifying countries must include the UK, France and Germany.  Spain and Italy have so far decided not to participate in the EU patent package, but are free to opt back in at any time.  The European Commission anticipates that the European Patent Office will grant the first Unitary EU Patent in 2014.  …
Continue Reading A Unitary Patent for Europe is Finally Approved