Impact of Artificial Intelligence on U.S. Patent Laws FOR THE LICENSING EXECUTIVES SOCIETY SEPTEMBER 25, 2018 JUSTIN D. PETRUZZELLI, ESQ.

Transcription

1 Impact of Artificial Intelligence on U.S. Patent Laws FOR THE LICENSING EXECUTIVES SOCIETY SEPTEMBER 25, 2018 JUSTIN D. PETRUZZELLI, ESQ. PARTNER

2 Topics to be Covered 1. Applications of Artificial Intelligence 2. Problematic Patent Issues Presented by AI A. Inventorship and Ownership B. Patentability and Prior Art 2

3 Applications of Artificial Intelligence 3

4 Applications Debating with Humans June 18, 2018 ~ debater artificialintelligence.html?partner=rss&emc=rss&smtyp=cur&smid=tw nytimes&_lrsc=fe95332e c b4cdfdc3819c7341 4

5 Applications Likelihood of Death June 19, 2018 ~ style/gadgets and tech/news/google ai predict when die death date medicalbrain deepmind a html 5

6 Other Applications Driverless Vehicles Manufacturing Social Media Robotics Speech Recognition

7 Problematic Patent Issues Presented by AI 7

8 AI Patent Issues Very few topics have the potential to swallow all of patent law. 8

9 Consider Company X contracts the use of Company Y s AI to help find the ideal shape of a medical device. The AI produces the ideal shape of the medical device. Can the ideal shape of the medical device be patented? Who owns patent rights if they exist? 9

10 Inventorship and Ownership 10

11 Inventorship Determining inventorship is nothing more than determining who conceived the subject matter at issue ~ Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994) (internal citations omitted). 11

12 Inventorship Conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known. (Sewall case) Earlier Definition: formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention. (Townsend case) The term inventor means the individual. (35 U.S.C. 100(f)). ~ Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994) (internal citations omitted); Townsend v. Smith 36 F.2d 292, 296 (CAFC 1929). 12

13 Inventorship The Creativity Machine Dr. Stephen L. Thaler, 1994 Creativity Machines represent a new kind of neural network paradigm that is capable of generating rather than just associating patterns. ~ engines.com/iei_cm.php 13

14 Inventorship Patenting Inventions in AI The Creativity Machine itself is patented under U.S. Patent No. 5,659,666 (Dr. Stephen L. Thaler) Device for the Autonomous Generation of Useful Information 14

15 Inventorship Patenting Inventions in AI Improvements in AI itself are evaluated for patenting in the same manner as other software based inventions. Consequently, on a case by case basis, they are subject to the same potential pitfalls as other software based inventions. E.g., will they be deemed: Abstract ideas? Mental processes? Performable by a human using pen and paper? 15

16 Inventorship Patenting Inventions in AI Blue Spike, LLC v. Google Inc., Case No. 14 cv YGR (ND Cal. Sept. 8, 2015), affirmed in a nonprecedential decision by the Federal Circuit, slip op (2016). Blue Spike asserted patents against Google (e.g., YouTube) that contemplate determining whether one piece of content e.g., a picture, a song, or a video matches another, or the extent to which they are similar. 16

17 Inventorship Patenting Inventions in AI Blue Spike, LLC v. Google Inc., Portion of Claim at Issue: 17

18 Inventorship Patenting Inventions in AI Blue Spike, LLC v. Google Inc. Law Applied: If the claims are directed to an abstract idea, a court must then consider whether they nevertheless involve an inventive concept such that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself. 18

19 Inventorship Patenting Inventions in AI Blue Spike, LLC v. Google Inc. Held to be Directed to an Abstract Idea: the patents are directed to an abstract idea the idea of comparing one thing to another. The Court further notes that the specification does not teach the specifics of implementation it includes no source code, detailed algorithms or formulas, or the like. 19

20 Inventorship Patenting Inventions in AI Compare Blue Spike, LLC v. Google Inc. with the patent on the Creativity Machine. Would the patent on the Creativity Machine stand under today s examination standards? 20

21 Inventorship AI Inventions vs. AI Generated Inventions In the case where a patent is sought on an improvement in the AI itself, inventorship is clear it s the person or people who invented the improvement in the AI. What about AI generated inventions? 21

22 Inventorship AI Produced Inventions The Creativity Machine is credited with numerous inventions: The cross bristle design of the Oral B CrossAction toothbrush New materials Devices that search the Internet for messages from terrorists ~ I Think, Therefore I Invent: Creative Computers and the Future of Patent Law, Ryan Abbott, Boston College Law Review, Vol. 57, Issue 4, Article 2, pg. 1085, Sept. 28,

23 Inventorship AI Produced Inventions The Creativity Machine is credited with having invented U.S. Patent No. 5,852,815, but only Dr. Thaler is listed as the inventor. Neither the U.S. Congress nor the courts have addressed whether AI Generated inventions can be patented, and if so, who should be awarded inventorship. ~ Artificial Intelligence Collides with Patent Law, Center for the Fourth Industrial Revolution, White Paper, World Economic Forum, page 9 (April 2018) 23

24 Inventorship AI Produced Inventions Possible Solutions List AI as the inventor? AI as legal entity? List no inventors? Procedural steps to require human involvement to preclude sole AI inventions? If an operator inputs parameters into AI that results in an invention, could the operator be an inventor? Like experimentation leading to a discovery? ~ Artificial Intelligence Collides with Patent Law, Center for the Fourth Industrial Revolution, White Paper, World Economic Forum, page 10 (April 2018) 24

25 Ownership AI Produced Inventions Normally, under U.S. Law, patent rights to an invention initially reside in the inventor(s), which typically are assigned to the employer. If there is no inventor, where does ownership initially reside? Should the AI s owner be the initial owner of AIproduced inventions? Windfall to owner? Use of Contracts/Agreements to bear on the issue? ~ See, e.g., 35 U.S.C. 262, MPEP

26 Patentability and Prior Art 26

27 Consider Person X is a politically motivated and sophisticated programmer who believes that all patents are an impediment to society. Person X develops AI to continuously analyze existing patent literature and automatically generate prior art to fill in the gaps, and the AI continuously publishes this generated prior art to a web site. Has Person X effectively precluded new patents? ~ See, e.g., Ben Hattenbach & Joshua Glucoft, Patents in an Era of Infinite Monkeys and Artificial Intelligence, 19 Stan. Tech. L. Ref. 32 (2015). 27

28 Patentability and Prior Art Patent Examiners evaluate inventions from the standpoint of a person of ordinary skill in the art (field) who is aware of all available prior art in that field. Prior art includes printed publications. public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication. ~ See, e.g., MPEP 2141 (II)(C); 35 U.S.C. 102(a)(1); and Suffolk Technologies, LLC. V. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (internal citations omitted) (bold italics added for emphasis). 28

29 Patentability and Prior Art A given reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. ~ Suffolk Technologies, LLC. V. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (internal citations omitted) (bold italics added for emphasis). 29

30 Patentability and Prior Art Voter Verified, Inc. v. Premier Election Solutions, Inc. An article made available through an online publication, Risks Digest, but not indexed by any general search engine was nonetheless a printed publication and could be used as invalidating prior art. The article was distributed online via a subscription mailing list and also made available for download through an FTP site. Reasonably accessible to those interested in the field. ~ See, e.g., Ben Hattenbach & Joshua Glucoft, Patents in an Era of Infinite Monkeys and Artificial Intelligence, 19 Stan. Tech. L. Ref. 32, 37 (2015) citing Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012). Risks Digest is now available at 30

31 Patentability and Prior Art Prior art, including printed publications, must also be enabling. That is, the prior art must teach the public how to create the claimed invention without having to undertake significant additional experimentation. ~ See, e.g., Ben Hattenbach & Joshua Glucoft, Patents in an Era of Infinite Monkeys and Artificial Intelligence, 19 Stan. Tech. L. Ref. 32, 38 (2015) citing Consol. Elec. Light Co. v. McKeesport Light Co., 159 U.S. 465 (1895). 31

32 Patentability and Prior Art Algorithmically Generated Prior Art 32

33 Patentability and Prior Art Reasonably accessible to those interested in the field? Reasonable diligence to find it? Enablement? ~ Suffolk Technologies, LLC. V. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (internal citations omitted) (bold italics added for emphasis). 33

34 Patentability and Prior Art What if AI is allowed to be an inventor? What will that do to the concept of the person of ordinary skill in the art? Higher bar for inventiveness? ~ Suffolk Technologies, LLC. V. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (internal citations omitted) (bold italics added for emphasis). 34

35 Questions? Thank you for your time. Justin Petruzzelli ( ) 35

36 Some Noteworthy Sources Artificial Intelligence Collides with Patent Law, Center for the Fourth Industrial Revolution, White Paper, World Economic Forum, page 10 (April 2018) Ben Hattenbach & Joshua Glucoft, Patents in an Era of Infinite Monkeys and Artificial Intelligence, 19 Stan. Tech. L. Ref. 32 (2015) I Think, Therefore I Invent: Creative Computers and the Future of Patent Law, Ryan Abbott, Boston College Law Review, Vol. 57, Issue 4, Article 2, pg (Sept. 28, 2016) 36

37 Disclaimer The contents of this presentation are for the purposes of illustrating some general legal concepts and are not intended to be relied upon for making decisions regarding particular issues. If you have a particular issue that might involve any of the legal issues presented herein, please contact us for the appropriate legal advice. 37