Evan Smith, Law Clerk
March 27, 2023
The U.S. Copyright Office has clarified its examination and registration practices for works that were produced with the assistance of artificial intelligence (“AI”), in a policy statement titled “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence.” This statement addresses the registration eligibility and application requirements for creative works that were generated by humans working in concert with AI.<... Read more
Kurt M. Berger, Ph.D.
August 16, 2022
The Federal Circuit recently affirmed a decision in the Eastern District of Virginia holding that the Patent Act unambiguously requires an inventor to be a natural person.<... Read more
January 27, 2022
An ongoing discussion in the field of artificial intelligence (AI) and patent law relates to the implications of AI toward the standard for a person having ordinary skill in the art (“PHOSITA”). While the PHOSITA is a legal fiction, resolving the level of ordinary skill in the pertinent art is one of the Graham factors enunciated by the Supreme Court in the framework for determining obviousness under 35 U.S.C. §103. <... Read more
Kurt M. Berger, Ph.D.
October 18, 2021
As previously discussed in this blog (see Creation vs. Conception: Can an AI Machines be an Inventor?) some AI researchers believe that the output of certain sophisticated AI software can represent a new invention conceived of, not by the author, user, or trainer of the software, but by the software itself, and that the software or the “AI machine” should be listed as the inventor on a patent application for the new invention. This AI-machine-as-inventor proposition is currently being tested by Dr. Stephen Thaler via the filing of patent applications in over a dozen countries for inventions allegedly invented by a neural-network-based AI machine (“DABUS”), and the listing of the inventor as “DABUS” on the application (with Dr. Thaler listed as the applicant and assignee). At the time of our previous posts last fall, the USPTO, the EPO, and the UKIPO each objected to listing DABUS as the inventor since DABUS is not a natural person.<... Read more
October 7, 2021
by: Robert W. Downs, Ph.D.
My career includes work in research in artificial intelligence, patent examination at the U.S. Patent and Trademark Office, and patent application preparation and prosecution, all over a period of about 40 years. Over that period, I have completed three Masters Degree programs in computer-related fields. As a researcher, I have experienced the difficult challenge of not just writing computer programs in programming languages such as Fortran and Lisp, but getting the programs to work and actually produce desired results. As a patent examiner, I have experienced the difficult challenge of searching for prior art based on a high level description of an invention, as well as judging whether a computer-related invention is patentable under Section 101. As a patent agent, I have experienced a difficult challenge of preparing patent application for computer-related inventions, while keeping in mind a broad range of potential prior art and the high possibility of receiving a rejection under Section 101.<... Read more