Wow, fascinating issue, this one. For now the short answer is a simple “no”, and several patent offices across the globe have already ruled that AI machines cannot be regarded as inventors. See e.g., article by the Chinese law firm, Liu Shen.
However, as AI machines become ever more powerful, the issue is bound to come up again and again. One sign that the issue is still alive is that the U.S. Patent and Trademark Office is apparently trying to resolve several thorny issues related to AI inventors, including the following:
(1) What constitutes an AI invention. Is it the AI database? The algorithm? How the AI is trained?
(2) What about disclosure of the inventive subject matter? The current patent laws require that a patentable invention must be disclosed in sufficient detail that a hypothetical person of ordinary skill in the field of the invention (a PHOSITA) can make and use the invention. Is an AI machine a sole if it comes up with a general idea, but sufficient disclosure is only provided by a human?
(3) What about that PHOSITA? With that hypothetical person include only humans? Or would it potentially include other AI machines, or other instances of the same AI machine?
(4) What about ownership and assignment? If an AI machine has patent rights, are those rights automatically transferred to a person or company owning the AI? What if the AI is public domain? Do the patent rights go to whomever trained or used the AI? What if a person simply installed the AI on his/her computer, and that AI machine invented something without any direction at all?
(5) What about disclosure of prior art? Current patent law requires that an inventor disclose to the patent office all information that the inventor possesses, that a reasonable examiner would want to know about, and that is not cumulative. Depending on the AI algorithm it might be impossible for an AI machine to determine what information it used to derive the invention.
At Fish IP, we don’t see the issue going away anytime soon. What happens, for example, when electronic or bio-neural processors are embedded in brain tissue? Did an invention arise from the embedded processor, or the human part of the brain? And what if the invention arose because the electronic or bio-neural processor was communicating with others, in a sort of hive as contemplated by US patents 9,501,573 and 10,055,771? Time to fasten your seat belt!
We have some new Patent Beast Comics up. This short series is a riff on how clients might be assigned to the right attorney for them based on how they respond to the CoronaVirus through their choice of masks. Fans of the Harry Potter series will recognize the sorting hat and the respective colors that the clients are wearing linking them with a certain House at Hogwarts.
The full series can be found on the PatentBeast.com site.
Although the length of time that PTAB appeals are pending has only gone down slightly over the last three years, the number of new appeals has steadily declined. This seems to be the case for both inter-partes and ex-parte appeals.
It’s not clear why that has happened. One theory is that the relatively lower cost of IPRs and other appeals has made patent holders more likely to settle with a potential competitor – to avoid a relatively high chance of the patent rights being voided.
Provisional applications in the US only last one year. If no utility or international application is filed during that one-year window, a provisional goes abandoned, and cannot be used to claim priority. Sometimes the applicant is not ready to file a utility or international application during that window, and instead re-files the provisional.
The problem is that if that re-filed provisional is filed while the earlier provisional is still pending, there is a chance that a priority claim to the re-filed provisional will fail in a subsequently national or regional phase application. Article 4(c)(4) of the Paris Convention provides that any subsequently-filed priority application can only serve as the basis for priority over an earlier-filed priority application if several conditions are met, including that there are no remaining rights from that earlier-filed application when the subsequently-filed application is filed. In the European Patent Office (EPO), for example, a request for re-establishment could be filed up to 2 months after the one-year window has passed for the earlier-filed provisional. If such a request for re-establishment is granted, there would still be outstanding rights from that earlier-filed provisional, and priority to the subsequently-filed application would fail.
Best practice then, is that if a re-filed provisional is used as priority for a PCT application, any earlier-filed but still pending provisional should be expressly abandoned before refiling the provisional. Kudos to Terri Shieh-Newton, PhD of Mintz-Levin for pointing out this problem.
Patexia is a terrific resource for statistics regarding intellectual property. Earlier this week Patexia reported that there has been a 20% drop in IPR (Inter-Partes Review) petitions since 2019. Their 4th Annual IPR Intelligence Report, which can be purchased for $1495, breaks out IPRs handled by each law firm during the last five years, including a gauge of success rate.
Fish IP has represented both petitioners and patent owners in over 10 post-grant proceedings before the Patent Trials and Appeals Board (“PTAB”), including both Inter Partes Reviews (“IPR”) and Covered Business Method (“CBM” reviews). Fish IP has achieved over a 90% success rate before the PTAB, and 100% success rate on appeals to the Federal Circuit. Fish IP’s work included winning one of the first ever CBM trials, and – at the time – one of only six (6) successful patent owner motions to amend (as cited by the U.S. Supreme Court). The technologies in Fish IP’s proceedings ranged from financial software to a variety of mechanical and electrical engineering inventions. Fish IP’s work also resulted in several precedential opinions from the PTAB.
Fees are going up by an average of about 5%. Basic out-of-pocket costs for filing a utility application will go up to $910 for a small entity, and half that for a micro-entity. Of course, additional charges will still apply for excessive number of claims and excessive number of pages. The patent office is also continuing to disfavor multiple dependent claims, raising the base charge for such claims from $820 to $860. Continuing prosecution costs will also increase, for Continued Examinations (RCEs), extensions, and issue fees. Interestingly, the patent office will begin applying a surcharge for applications filed in formats other than DOCX, but that surcharge will not take effect until Jan 1, 2022. Current fees can be found on the USPTO website.
Standards Essential Patents (SEPs) claim inventions that must be complied with to satisfy a technical standard. Think for example, MP3 music compression technology. Given that essentially everyone needs to license patents covering aspects of the standard, it is critical that everyone has a reasonable opportunity to license the patent rights at a reasonable, non-discriminatory fee (so-call FRAND licenses). See e.g., Wikipedia article. Naturally, some bad actors try to circumvent that arrangement, by seeking excessive rates from potential licensees. And that problem has historically been compounded by different rules in different jurisdictions. In August 2020 the U.K. Supreme Court took a giant step towards international conformity by holding that English courts have the power to set global licensing rates for multinational patent portfolios under European telecom standards!