Guidance on Patenting Inventions with AI Contributions

The following are my remarks given on April 25, 2023 to the USPTO as part of their AI listening session:

by Dennis Crouch

Members of the USPTO, and fellow participants of this AI Listening Session, thank you for inviting me here today and for taking time to consider these important issues.  I want to also thank the prior speakers who have done a great job laying out many of the issues.  I am also happy to work with any of you to help figure this out and reach a workable system that truly encourages innovation.

My name is Dennis Crouch, and I am a law professor at Mizzou and author of Patently-O. It is my privilege to discuss the role of generative AI in the realm of intellectual property and the need for clear guidance from the USPTO.

As artificial intelligence progresses at an unprecedented pace, numerous cases have emerged where generative AI has played a crucial role in conceiving an invention. In certain instances, if the AI were human, it would be rightfully recognized as at least a joint inventor. This raises the question of whether it is appropriate to designate the human, who contributed to only a part of the invention and collaborated with the AI, as the sole inventor. This is particularly concerning in cases where the AI introduced concepts that the human had not conceived or even considered. Generative AI differs from traditional tools in that its responses are unpredictable and it produces results akin to those of a human inventor.

I would like to draw attention to a striking similarity between generative AI and biological models, particularly in the context of the pending Supreme Court case of Amgen v. Sanofi. In this case, researchers patented a genus of monoclonal antibodies, but the antibodies’ amino acid sequences were not designed by humans. Instead, a genetically modified humanized mouse generated the antibodies in response to a specific antigen. This scenario closely mirrors the role of generative AI in the invention process.

The parallel between the genetically modified humanized mouse and generative AI becomes apparent when we examine the prompt given to the mouse in the form of a PCSK9 injection and the subsequent response: antibodies collected from the mouse’s spleen. This analogy can be applied to generative AI, with a human providing the initial input or prompt, and the AI system generating an inventive output.

One key issue is the uncertainty patent attorneys face regarding the proper course of action. Innovators are seeking to protect their valuable inventions, but the lack of clear guidance creates potential ethical dilemmas for patent attorneys. I recently published an article on Patently-O titled “AI Inventor and the Ethics Trap for US Patent Attorneys,” highlighting this concern.

I believe the USPTO should promptly offer guidance, stating that patent applications may appropriately list the human contributor to the conception as the sole inventor, even in situations where an AI or other tool provided key elements of the discovery.

The US Copyright Office has taken steps to deny registration of AI-created works. It is essential for the USPTO to avoid the current pitfalls of the US Copyright Office in addressing AI-related issues.  Ideally, US intellectual property policymakers would consider all aspects of IP—patent, trade secret, and copyright in our situation here—as a unified whole. This might present an opportunity to contemplate the establishment of a US Intellectual Property Office that merges the PTO and Copyright Office, while also providing some authority to regulate trade secrecy.

As several speakers have noted, generative AI is expected to reduce the cost of inventing, which is a tremendous benefit. As Profs Levine and Feldman explained, AI has different incentives than human inventors and lacks the fundamental humanity that our inventorship laws respect.  Still, a valuable technological improvement by an AI (such as a new medical treatment) is something that we want to encourage.

For inventions without direct human contribution, it is timely to consider a special rights category for computer-generated inventions. This unique exclusivity could feature a reduced term and additional requirements to ensure clarity and patentability, such as pre-screening, limited claims, definitions, and the incorporation of born-digital aspects of the documentation.

In conclusion, it is imperative for the USPTO to provide guidance on how to handle generative AI’s role in the invention process – distinguishing between situations where a human inventor exists and those with in no or insufficient human originality.

51 thoughts on “Guidance on Patenting Inventions with AI Contributions

  1. 13

    Great article.

    Removing the humans from being the inventors where AI is involved, undercuts the human contributors, and could lead to unfair treatment of them.

    1. 13.1

      Maybe, maybe not.

      I have seen (more than one) push to “find the nearest human” without the requisite determination of any such “nearest” satisfying the legal definition of inventor (under several different thrusts, including the false notion that the programmers, people doing the intake or training [either initial or ongoing], and the like are at least ‘co-inventors, when such clearly
      F
      A
      I
      L
      S
      to meet the legal definition).

      What do you mean by human contributors?

      1. 13.1.1

        For some reason David Lewis is unwilling to respond to the super cogent questions posed by e.e. cummings, Jr.

        1. 13.1.1.1

          The funny thing is that you think your post “scores a point” for you when I’m reality it only emphasizes the points that I score.

          Here’s a hint: don’t be one of those that run away (as you so often do when you have no counter point to hang on to).

          As it is, your short script of extremely old
          g
          a
          r
          b
          a
          g
          e
          runs thin and is easily disposed of.

  2. 12

    Hi Dennis – overall a thoughtful article.

    Your analogy between the use of the mouse and AI doesn’t appear to appreciate the similarities they share, in which lies the human contribution to the innovation. For each, a tremendous amount of work and innovation was needed to get the “AI” (the mouse or GPT3) to a state where a useful response can be provided by the “AI.” Overlooking this work naturally leads us to think that the “AI” came up with the invention alone – it did not. The “AI” optimized based on its tuning, parameters, pre-processed corpus data, etc., all developed and implemented by humans, uniquely for the problem they were solving for.

    The prompter may be an inventor (contribute an element to a claim). Still, that role is most likely not the sole inventor in light of the substantial work needed to get the “AI” to the state where the prompt can be entered with a reasonable expectation of a helpful result.

  3. 11

    “We think self-driving tech that’s fully separated from humans is very, very far away, and basically impossible,” Li Yunfei, a spokesperson for BYD, said in Mandarin, translated by CNBC.

    “When we think about [self-driving tech] from all aspects, from human psychological safety needs, from ethics, from regulation, from technology — including application in this industry — we haven’t figured out [the logic] and we think it is probably a false proposition,” Li told reporters on the sidelines of the Shanghai auto show on Tuesday.

    “There may be many industries and businesses that invest a lot of money on this [tech], and after investing for many years it will prove it leads nowhere,” he said.

    Food for thought. Note that this “realization” is not surprising to many of us who (ahem) “understood the tech” and thought about the relevant issues instead of just being dazzled like a five year old watching a muppet eat a cookie.

    1. 11.1

      Your feelings and opinions are noted.

      As is the unsubstantiated claim by you that you understand the tech.

      Given as well your long-standing misapprehension of software, the proper weight of Zero has been given to your feelings and opinions.

      1. 11.2.1

        “This will all get worked out, as will maneuvering in parking lots. Honestly, the biggest gripe about Waymo and Cruise cars seems to be that they dare to obey both the speed limit and traffic laws. But that says more about us than it does about them.”

        lelz. too true. People get very butt blasted when I drive the speed limit in my sports car too. I will admit that it is hilarious watching people in super cars cruise at 25 mph.

        1. 11.2.1.1

          My post (haranguing both Malcolm and Greg) never cleared the filter.

          Malcolm, for his perpetual ‘drive-by’ posting and 1gn0ring any counterpoints.

          Greg, for his
          L
          Y
          I
          N
          G
          (again) about his having blocked certain posters and ‘cannot even see’ their comments.

          Say “La Vie”

  4. 10

    Virtually any small molecule pharmaceutical product that targets a known protein or enzyme that has been approved in the past 20 years will have been developed with tools that make a significant contribution to the specific structural features of the molecules. Those kinds of tools have been available in pharma since at the least the mid-90s. A user can identify a specific target protein (and its active site), and the software will make recommendations that can interact or bind with it. It definitely is an iterative process between the user and the software with the software making recommendations based on user input. This is virtually the same as being an AI-driven invention.

    1. 10.1

      This is virtually the same as being an AI-driven invention

      No.

      No it is not.

      You are closer to the abacus than you are to AI.

      1. 10.1.1

        Here we go again with the “you just don’t understand the tech!” schtick.

        The reality is we understand it well enough and we also know that “anon” is a raging narcissist with a bad habit of telling lies constantly when he isn’t just posting vacuous nonsense and bizarre innuendo.

        1. 10.1.1.1

          My statement is correct, but feel free to show your knowledge and point out why it is not.

          Sure, like that will happen

        2. 10.1.1.2

          …. The iron rule of woke projection (or, as identified well before Dr. Lindsay coined that term:
          A
          O
          O
          T
          W
          M
          D

          (Fixed for accuracy:

          we also know that Malcolm is a raging narcissist with a bad habit of telling
          l
          i
          e
          s
          constantly when he isn’t just posting vacuous nonsense and bizarre innuendo.

          1. 10.1.1.2.1

            I forgot to mention the ridiculous appeals to “authorities” scraped from the bottom of crank podcasts out of the glibertarian fever swamp. Yawn.

            1. 10.1.1.2.1.1

              Lol – given your “appeal to authority” of some Chinese figure, the
              A
              O
              O
              T
              W
              M
              D
              is noted.

  5. 9

    …numerous cases have emerged where generative AI has played a crucial role in conceiving an invention. In certain instances, if the AI were human, it would be rightfully recognized as at least a joint inventor.

    Specific examples and/or citations to these ‘numerous cases’, please. And Thaler doesn’t count. I am asking for cases in which there is credible evidence of the exact role played by AI.

    1. 9.1

      Mark, what do you make of the comparison Dennis makes with the mouse that generated the antibody? Dennis tells his readers that it is strikingly helpful to reflect on it. Is he arguing that the mouse has to be named as co-inventor?

      Or is he arguing that the AI ought NOT to be named as co-inventor?

      1. 9.1.1

        Nobody knows what Dennis is babbling about when it comes to this topic and that probably includes Dennis.

      2. 9.1.2

        As I understand him, Dennis is asking us to accept that an antigen is analogous to an input prompt, an antibody is analogous to a generative output, and a genetically engineered mouse is analogous to a large language model.

        I’m sure the two are indeed strikingly similar. So long as you ignore the myriad differences.

        1. 9.1.2.1

          No analogy is meant to be an exact match, so the “there are so many differences” — without more — is a bit less persuasive than I think you meant it to be.

          That being said, I think that the attempt of the analogy, or perhaps more precisely, the value of the attempted analogy runs only so far as the feelings of the AI being merely a t001 being used.

          The USPTO listening session certainly provided a spectrum (including non-compatible) of views, including the position that at the end of the day, an invention could NOT be fully attributable to only human inventors.

          It is – and remains – decidedly unhelpful to simply try to dismiss this situation out of hand.

  6. 8

    Setting aside the jokes about unintelligent, lazy, hypnotized promoters of “rebuild the world around AI” nonsense, can one of the promoters come up with something actually thoughtful on the topic? Looking at you, Dennis. You’ve asked for comments and you’ve gotten a lot but you don’t really seem to be listening at all. Knock knock.

  7. 7

    “For inventions without direct human contribution, it is timely to consider a special rights category for computer-generated inventions. This unique exclusivity could feature a reduced term and additional requirements to ensure clarity and patentability, such as pre-screening, limited claims, definitions, and the incorporation of born-digital aspects of the documentation.”

    I disagree with this “separate and un-equal” system for our soon to be AI overlords for obvious reasons.

    1. 7.1

      Numerous countries and inventive entities have discovered the value of the utility model (Gebrauchsmuster). But I agree with you that it may be inappropriate to apply it here to IP generated inventions. Utility models are used mainly for incremental improvements of shorter market duration, whereas some IP generated inventions could be quite valuable and durable to deserve a full patent term. Also, most utility model sytems expressly exclude processes or methods, which in this case might also be IP generated.

  8. 6

    “the USPTO should promptly offer guidance, stating that patent applications may appropriately list the human contributor to the conception as the sole inventor, even in situations where an AI or other tool provided key elements of the discovery.”

    That.

    “For inventions without direct human contribution, it is timely to consider a special rights category for computer-generated inventions.”

    And that.

    1. 6.1

      Because we are being swamped by awesome “inventions” made by autonomously operating computers and the computers are demanding ownership or else.

      Seriously, what kind of drugs are you are on? Dennis has surrounded himself by low life mouth breathers for a long time (hard to avoid in Misery) but this is getting ridiculous.

      1. 6.1.1

        “mouth breathers”

        As if Malcolm is unaware that his use of that phrase is more of an indictment against him than anything else — and has been since it left the common vernacular decades ago.

        1. 6.1.1.1

          Where I come from it’s always been just a term for flyover country squirrel eaters who get their news at church or from watching water dry on a rock. I am happy to stick with “superstitious reactionary imbecile” if that is less triggering for you, snowflake.

  9. 5

    What about requiring disclosure in patent applications about the contribution of AI to the specification and to the claims as part of duty of disclosure? Such a duty would replace any need for naming an AI robot as a co-inventor. While the contribution of the robot would serve as prior art, it would not serve as the basis of patentability so that validity could be challenged where the AI contribution was foundational to the claimed invention.

  10. 3

    The US Copyright Office has taken steps to deny registration of AI-created works. It is essential for the USPTO to avoid the current pitfalls of the US Copyright Office in addressing AI-related issues.

    1) what are those pitfalls?
    2) for Copyright explicitly, how is this any different than what is clearly the mere continuation of another non-human instance (the Naruto case)?

  11. 2

    One does wonder what drugs are circulating around Missouri these days. Not good ones! Just returning to this and letting Q6chan’s pizza parlor musings lie and rot where they lay:

    “ For inventions without direct human contribution, it is timely to consider a special rights category for computer-generated inventions.”

    Again: no, it’s not “timely” nor is it necessary. What’s both “timely” and necessary is doing what you are suggesting to abstractions like software, which were “excepted” into the utility patent system by judicial fiat. Maybe get to work on that first?

    In the meantime, define exactly what is meant by a “computer generated invention without direct human intervention.”

    “additional requirements to ensure clarity and patentability, such as pre-screening”

    What is “pre-screening” and what criteria are used for the screening and who performs the screening and at what cost?

    “limited claims”

    What does this mean? What do you have in mind?

    “definitions”

    Hahaha.

    “the incorporation of born-digital aspects of the documentation”

    You mean code? What are you talking about?

    1. 2.2

      “and letting Q6chan’s pizza parlor musings”

      Que the impending housing crash 5-10 years down the line. LOL. NOBODY COULD SEE IT COMING! You never cease to amuse MM.

  12. 1

    Too bad you weren’t around to make the case for drastically reduced terms for software patents. That would have been helpful.

    I agree that the PTO should probably give guidance (and maybe a reassuring hug) to all of the applicants who are confused and frightened about what to do (in part because of the poorly reasoned silliness posted at this blog and elsewhere, and in part because of lowlifes like Thaler).

    As for this: “ For inventions without direct human contribution, it is timely to consider a special rights category for computer-generated inventions. This unique exclusivity could feature a reduced term”

    Zero term seems perfect. Zero term and we don’t turn the power to the computer off in exchange for the “valuable” information. What’s not fair about that, Dennis?

    1. 1.1

      “Zero term seems perfect. Zero term and we don’t turn the power to the computer off in exchange for the “valuable” information. What’s not fair about that, Dennis?”

      That seems a bit harsh.

      Anyhow, MM bro did you see Joe Biden actively planning the next housing crisis? And penalizing people who, *checks notes*, actually pay off the debts they take on as agreed with the lender (aka has a good credit score). Did you see it bro?

      link to youtube.com

      Saving black people from cletus by getting them housing, until whopsie daisy, the scheme collapses and leaves them destitute. Whooooopsie. It’s all so predictable, nobody can see it coming bro. MM bro, best part is, in your mind, it’ll no doubt be “republicans who leik totally knee cap the program” somehow.

      1. 1.1.1

        I forgot the best part about that whole schema, for some reason, uber credit people like myself (~813) somehow avoid being impacted at all. Is this just more elitist warfare amongst the whites with the elite white class warring on the slightly less than elite whites?

      2. 1.1.2

        Isn’t it that what Equity demands?

        Goes right along with the Ends Justify the Means.

        What could go wrong with that?

    2. 1.2

      Too bad you weren’t around to make the case for drastically reduced terms for software patents. That would have been helpful.

      Why would that have been helpful?

      As for your “zero term,” I will remind you of the open invitation for you to abstain from any innovation that you would deny patent protection to.

    3. 1.3

      Maybe we should address the obvious question first. Did AI help write (or excessively write) this article? It is very much in lines stylistically with what one gets from AI in generic attempts.

      1. 1.3.1

        This has been true of other instances of Dennis’ writing lately. Maybe he’s trying to make some ironic point but I highly doubt it.

        1. 1.3.1.1

          What? He’s not a part of yours and Greg’s experiment?

          (Maybe the experiment is on you, eh?)

Comments are closed.