By Andrei Iancu and Rama Elluru
This commentary from the CSIS-SCSP Task Force on IP in the AI Era was originally published in the Special Competitive Studies Project’s Substack on February 15, 2024.
With roots in the U.S. constitution, patent rights provide an exclusive property right in new inventions like drugs, new ways to make things like energy, and synthetic materials. However, as artificial intelligence (AI)—and specifically generative AI—are increasingly integrated across all fields such as health, education, and science, uncertainty exists in what inventions can be protected by patent rights when AI is part of the invention creation process.
In the U.S. government, the United States Patent and Trademark Office (USPTO) is working on resolving this and related questions. On Tuesday, in response to President Biden’s executive order, the USPTO issued Inventorship Guidance for AI-assisted Inventions to stakeholders and personnel on how the USPTO will analyze inventorship issues as AI systems play an increasing role in the invention creation process, as well as seeking public comment on this guidance.
SCSP also sought to answer this difficult question. We launched a Task Force on intellectual property (IP) in the AI Era (IP Task Force)—in collaboration with the Center for Strategic and International Studies (CSIS) Renewing American Innovation Project. Over the past year, the IP Task Force studied these patent inventorship issues through a series of workshops.
Working to provide clarity on this issue is critical because patent rights surrounding AI-generated inventions, inventors, creators, and investors will flounder in uncertainty at a significant cost to our society and the economy.
Patent rights provide incentives to disclose new discoveries to the public domain and protections to bring them to commercialization. Now more than ever, a robust U.S. innovation ecosystem is the underpinning of U.S. national security, economy, and society. Uncertainty and unclarity in patent laws weakens our patent system because stakeholders are less willing to utilize the system and invest in necessary risks. The strength of the United States patent system is, therefore, a critical lever in the U.S. innovation ecosystem. Inventors, companies, investors, and the public need certainty in the patent regime in order for the promised incentives to have meaning.
So, who (or what) can obtain IP protection, such as a patent?
To address this question, the IP Task Force convened three workshops with diverse stakeholders from the innovation space, together with representatives from biotechnology and high-technology sectors, Executive Branch, including USPTO and congressional staff, academia, and civil society. These workshops revealed a somewhat surprising level of consensus regarding inventorship for inventions generated with the use of AI.
The workshops were led by guided questions such as: Should inventions generated with the help of AI tools be patentable? If so, who, under current laws requiring named inventors on patent applications to be natural persons, is the inventor(s) in these scenarios? What actions constitute the “conception” currently required for inventive contribution in these scenarios? What is the purpose of requiring patent applications to identify an inventor? If AI contributes to an invention in the same manner that would require a human to be listed as a co-inventor, what are the implications for patentability? Is there a point at which AI contributions are so significant as to nullify patentability?
The final workshop invited industry experts to give presentations on real world examples of how AI is currently being used to create inventions and who in these scenarios should be identified as the inventor(s) in a patent application under current patent law. The examples presented demonstrated a range of AI involvement in the innovation process, from minimal to more substantial contribution.
These examples provided a glimpse into the changing landscape of AI innovation. Applications in drug discovery, code generation, and material sciences were identified by the presenters as common AI use cases in invention creation processes.
Importantly, there was broad consensus among industry participants in our Task Force—which included representatives from large and small biotechnology and technology companies—that AI-enabled inventions should be entitled to patent protection. There was also significant discussion as to the bases in current law that enable this result. The IP Task Force Chairs share a summary of conclusions from our workshops. (Note: These conclusions are solely from the perspective of the IP Task Force Chairs and have not been expressly approved by the participants.)
- Protecting human contributions and ingenuity is paramount. As AI use becomes more ubiquitous and makes greater contributions in invention processes, protecting and promoting inventions by humans, even if aided by AI, is critical to the innovation ecosystem.
- Current patent regime is sufficient. Given the current state of AI capabilities, current laws sufficiently address the role of AI in the invention process.
- View on changing current patent laws. There is not a majority push for changing patent laws to recognize AI as an inventor in its own right.
- AI is a “sophisticated tool.” For the foreseeable future, AI’s role in the innovative process is as a “sophisticated tool” that is not capable of conception to qualify as an “inventor” in its own right.
- Inventions enabled by AI use should be entitled to patent protection. Inventions resulting from AI use should be entitled to patent protection because humans are ultimately responsible and such patentability incentivizes innovation as usual.
- Which human do you name as the inventor? In order for an individual to qualify for inventor status, the individual must provide an inventive contribution.
- Inventorship and conception go hand in hand. Inventorship is defined by notions of “conception,” which courts have outlined in various decisions.
- Conception and recognition/appreciation identify the “inventor.” When an “invention” results from the combination of human effort and AI use, individual(s) that recognize/appreciate results may qualify as an “inventor.”
- Guidance is necessary for which “individual” qualifies as the inventor. If AI is used in the invention creation process and an “inventor” must be a human, guidance is needed on edge cases of what does and does not constitute inventive contribution by a human.
- Design patents present unique issues. Design patents should be assessed alongside current issues surrounding inventorship. Specifically, AI use in the design patent context can differ from how AI is used in the utility patent context.
These conclusions are based in part on the understanding that AI is currently a sophisticated tool for human use. However, some participants thought that the possibility of artificial general intelligence or other forms of sophisticated AI capable of true human consciousness are on the horizon. AI contributions are moving on a spectrum from being a “sophisticated tool” to something more significant, although not everyone agrees on the speed of that progress or the ultimate endpoint.
Some thought that “recognition and appreciation” is one area where AI could potentially achieve what humans can do. For example, virtual labs can conduct experiments that identify molecules that target a specific receptor and explain what the consequence would be of that molecule interacting with the receptor. A different analysis might apply if such technology becomes reality.
AI advancements will contribute more and more significantly to the invention processes, blurring the lines of inventive contribution and raising the question of whether AI should be considered a joint or perhaps even sole inventor. Industry needs certainty and predictability, and the United States should have a strategy in place for the inevitable future in which advanced AI capabilities challenge the current patent regime. The Department of Commerce and the USPTO are best positioned to establish mechanisms whereby revisions to the patent regime can be explored as soon as they become necessary. While the specifics of such updates will not be clear until the capabilities and application of future AI technologies can be accurately evaluated, we must have in place sufficient capabilities to reduce the response time to a sudden paradigm shift in AI inventorship and other issues that may need urgent attention. United States leadership in AI and other emerging technologies depends on it.
We applaud the USPTO for issuing inventorship guidance for inventions assisted by AI. The USPTO is seeking public comment on the guidance. We encourage public engagement on these critical issues. Our society and economy depend on getting these questions right.
Andrei Iancu is senior adviser with the Renewing American Innovation Project at the Center for Strategic and International Studies in Washington, D.C. Rama Elluru is senior director for Society and Intellectual Property, Special Competitive Studies Project (SCSP).