• Skip to primary navigation
  • Skip to content
  • Skip to primary sidebar

McCarter & English Logo

  • People
  • Services
  • Insights
  • Our Firm
    • Leadership Team
    • Social Justice
    • Diversity, Equity & Inclusion
    • Pro Bono
    • Client Service Values
    • Alumni
  • Join Us
    • Lawyers
    • Summer Associates
    • Patent Professionals
    • Professional Staff
    • Job Openings
  • Locations
    • Boston
    • Philadelphia
    • East Brunswick
    • Indianapolis
    • Stamford
    • Hartford
    • Trenton
    • Miami
    • Washington, DC
    • New York
    • Wilmington
    • Newark
  • Share

Share

Browse Alphabetically:

  • A
  • B
  • C
  • D
  • E
  • F
  • G
  • H
  • I
  • J
  • K
  • L
  • M
  • N
  • O
  • P
  • Q
  • R
  • S
  • T
  • U
  • V
  • W
  • X
  • Y
  • Z
  • All
Bankruptcy, Restructuring & Litigation
Blockchain, Smart Contracts & Digital Currencies
Business Litigation
Cannabis
Coronavirus Resource Center
Corporate
Crisis Management
Cybersecurity & Data Privacy
Delaware Corporate, LLC & Partnership Law
Design, Fashion & Luxury
E-Discovery & Records Management
Energy & Utilities
Environment & Energy
Financial Institutions
Food & Beverage
Government Affairs
Government Contracts & Global Trade
Government Investigations & White Collar Defense
Healthcare
Hospitality
Immigration
Impact Investing
Insurance Recovery, Litigation & Counseling
Intellectual Property
Labor & Employment
Life Sciences
Manufacturing
Products Liability, Mass Torts & Consumer Class Actions
Public Finance
Real Estate
Renewable Energy
Sports & Entertainment
Tax & Employee Benefits
Technology Transactions
Transportation, Logistics & Supply Chain Management
Trusts, Estates & Private Clients
Venture Capital & Emerging Growth Companies
  • Broadcasts
  • Events
  • News
  • Publications
  • View All Insights
Search By:
Media item displaying THE INVENTINATOR: May AI “Inventors” Get Patents?
Main image for THE INVENTINATOR: May AI “Inventors” Get Patents?
Publications|Alert

THE INVENTINATOR: May AI “Inventors” Get Patents?

Intellectual Property Alert

5.8.2020

For decades, authors and filmmakers have contemplated the challenges and opportunities presented when machines take on humanlike capabilities. In 1984, James Cameron sent us the Terminator, a cyborg created by SkyNet, an artificial intelligence (AI) system that became self-aware and sent its assassin back in time to influence future events. Numerous other robots, androids, and AI systems have entertained us in movies like 2001: A Space Odyssey (HAL the malevolent computer), Star Wars (R2D2 and C-3P0), and the Star Trek series (e.g., Commander Data in Star Trek: The Next Generation). But the humanlike abilities of AI, as helpful or problematic as they may be, present real legal questions that are yet to be answered.

Last year, a group of patent attorneys filed applications in the U.S. and in other jurisdictions naming no natural person as an inventor. Rather, the applications state that they relate to an “invention generated by artificial intelligence.” The attorneys filed the applications as part of a project (The Artificial Intelligence Project) “seeking intellectual property rights for the autonomous output of [AI].” Patent law, however, requires that applicants name a natural person as an inventor. Accordingly, the United States Patent and Trademark Office (USPTO) objected to the U.S. patent application, and the patent attorneys requested that the patent office declare that AI could be named as the inventor.

The patent attorneys allege that the invention claimed in the patent application was generated by a “creativity machine” programmed as a series of neural networks to independently create the invention. U.S. patent law requires that each application name an inventor, and further defines “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 USC § 100(a). The USPTO declined to construe “inventor” so broadly as to cover sentient machines, stating that references in the relevant patent statutes to whoever, himself, and herself, along with requirements for a person to sign an inventor’s oath or declaration, preclude such a broad reading of inventor. The USPTO further noted that case law holding that a state or corporation could not be inventor supports the notion that inventors must be natural persons.

The USPTO’s position leads to the ultimate result that AI-generated inventions may not receive patent protection. But with a rapidly developing industry in which AI output may be considered an inventor, it seems likely that patent attorneys for the AI inventor will appeal this decision, and like the Terminator, will be back.  

What is less clear is whether the issue can be resolved through judicial proceedings alone. Will legislative action be needed to clarify who (or what) can be an inventor under U.S. law? Similar questions are being asked before the EPO in related European cases. The U.S. patent application referred to above is Ser. No. US 16/524,350. The application is not yet published, but the USPTO’s decision is available here.

sidebar

pdfemail

Related People

Media item: Matthew R. Van Eman, MD
Matthew R. Van Eman, MD

Partner

Related Services

Intellectual Property
Subscribe to our Insights
McCarter & English, LLP
Copyright © 2023 McCarter & English, LLP. All Rights Reserved.
  • Login
  • Attorney Advertising
  • Privacy
  • Awards Methodology
  • Contact
  • Subscribe
  • Sitemap

The McCarter & English, LLP website is for informational purposes only. We do not provide legal advice on this website. We can provide legal advice only to our clients in specific inquiries that they address to us. If you are interested in becoming a client, please contact us, but do not send any information about your specific legal question. We cannot serve as your lawyers until we establish an attorney-client relationship, which can occur only after we follow procedures within our firm and after we agree to the terms of the representation.

Accept Cancel