Federal Circuit Agrees with the USPTO: an AI System Cannot be an Inventor

Attorney: 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

AI as a Tool for the "PHOSITA"

Attorney: Sameer Gokhale
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.[1] <... Read more

Update on DABUS: Can an AI Machine be an Inventor?

Attorney: 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

My Reflections on Examining and Prosecuting Patents in AI for the Last 40 Years

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

AI and Written Description: When Does an AI Patent Claim Cross the Line?

Attorney: Sameer Gokhale
June 28, 2021

Following Ed Garlepp’s great discussion on AI disclosure issues[1][2], I want to describe a related problem with AI and issues arising under the written description requirement that I often bring up when presenting on this topic. I started raising this topic following an episode of HBO’s Silicon Valley.  One of the characters who lives in the incubator depicted in the show, Jian Yang, pitches an app to venture capitalists called “See Food” which is described as a “Shazam for food.” The user takes a picture of food, and then the app returns an identification of the food.    Eventually Jian Yang does come up with an app that can identify food. The problem: it can only identify “hot dog” and “not hot dog.”  When asked why he only created an app that only recognizes one type of food, Jian Yang explains that identifying more foods will require scraping significantly more images of food from the Internet to use as training data for a computational model.<... Read more