For as long as the U.S. patent system has existed, emerging technologies, even those considered “primitive” by today’s standards, have posed challenges in the interpretation and application of patent laws. Patenting AI inventions has become more popular in recent decades. Also, in the recent decades of rapid advancement of computing and networking technologies are perhaps the most profound examples.
Rapidly advancing computing technologies, for example, have created significant upheaval in the interpretation and application of one of the most fundamental concepts of patent law, namely the statutory eligibility of an invention for patent protection under Section 101 of the patent statute (35 U.S.C. § 101), as applied to inventions involving computer software and “computer-implemented” inventions.
“Artificial Intelligence” or “AI” is a term used to describe the capabilities of man-made computing devices to emulate or exhibit adaptive and human-like attributes. “Machine learning” may be considered a comparable descriptor.
Start-up businesses often succeed by leveraging off of emerging trends and technologies, and inclusion of AI or machine learning components into innovative products and services is not likely to be an exception to this.
Seemingly in recognition of this, the U.S. Patent & Trademark Office (PTO) has requested public input on issues regarding artificial intelligence inventions “for purposes of evaluating whether further examination guidance is needed to promote the reliability and predictability of patenting artificial intelligence inventions.” (FR Doc. 2019-18443 Filed 8-26-19; 8:45 am). The PTO request can be found here:
The questions posed by the PTO relate not only to the question of innovations within the field of AI itself, but also innovations achieved as a result of applying AI to obtain a solution. In a sense, this is no different than distinguishing between the inventiveness of microprocessor designers and that of the software engineers controlling the operation of the microprocessors.
Yet in the context of AI, there remains the possibility that both hardware and software designers may achieve further innovation, with the application of their hardware and software in an AI system, say, a neural network or so-called “machine learning” system, to reach new levels of innovation.
In this context, the PTO has presented the following “Issues for Comment”:
FR Doc. 2019-18443
Some fundamental questions about the interplay between AI and the patent system are quite compelling. For one example, if a hardware and software team creates an AI-capable system adapted to solve one or more problems, and the system is subsequently proven to have solved the problem, who “invented” the solution? This is not a purely academic inquiry, as the question of inventorship has been an important factor in U.S. patent law since its earliest incarnations.
If the interplay between the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court as it relates to Section 101 eligibility are any indication, there is little doubt that the questions raised by the PTO in this call for information are tidings of things to come in prosecution of patent applications and litigation of patents for some time to come.