This post originally appeared as an article (“Stakeholders Should Not Miss Congress’s Invitation for Feedback on Patent Eligibility”) on Law.com on October 7, 2021.
The Federal Circuit created controversy in 2020 over its application of the Supreme Court’s subject matter eligibility jurisprudence by finding a method of manufacturing an automobile propshaft ineligible for patent protection. See American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 966 F.3d 1347 (Fed. Cir. 2020).
According to the opinion, the claimed method was directed to an application of Hooke’s law, and thus patent ineligible. Soon after this decision, members of the Congressional Subcommittee on Intellectual Property asked the USPTO to publish a request for information on the current state of patent eligibility jurisprudence in the United States.
In particular, Senators Thom Tillis, Mazie Hirono, Tom Cotton, and Chris Coons sought to learn how the current jurisprudence has “adversely impacted investment and innovation in critical technologies,” such as quantum computing, artificial intelligence, and precision medicine. 86 FR 36257.
A recent court decision on whether an AI system can be named an inventor in a patent application provides a compelling reason for stakeholders in the artificial intelligence industry to respond to the request. In Thaler v. Hirshfeld, the United States District Court for the Eastern District of Virginia concluded that an AI system cannot be an “inventor” under the Patent Act.
The decision confirms that inventions generated by AI are not eligible for patent protection in the United States. See Thaler v. Hirshfeld et al., Civil Action No. 1:20-cv-903-LMB (E.D. Va. September 2, 2021). The question of whether an AI system can be an inventor is now expected to proceed to the Federal Circuit. The utility of such appeal is questionable, however, as the District Court aptly stated “it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.” Id., 18.
There is no question that AI has helped companies compete more effectively in an increasingly challenging marketplace while also providing significant benefits to society. Already, AI has been deployed to improve patient diagnostics and treatment, reduce workplace injuries, and increase food security. In one example, a company applied AI to complete an exploratory research phase for a new molecule to treat obsessive-compulsive disorder in less than one year. In contrast, conventional research techniques would have required almost 5 years to complete this phase.
In another instance, researchers created AI that analyzes genetic patterns of viruses to predict zoonotic risk—a measure of how likely a virus that exists among animals will cause disease in humans. The societal benefits to be derived from continued innovation and investment in this critical technology are plentiful. Given the rapid pace at which technology is being developed, the emergence of AI systems that can invent novel solutions to real-world problems no longer seems impossible.
At a time when nations are declaring their intention to become AI superpowers, most would agree that innovation that is capable of producing novel solutions to humanity’s most complex problems—whether accomplished by human or AI effort—should be incentivized and rewarded.
A potential expansion of the Patent Act to accommodate AI inventors can help provide this incentive. Whether such expansion should occur and to what extent is, of course, for Congress to determine. Companies in the AI industry and other stakeholders should seize this opportunity to share their views with Congress on the potential evolution of U.S. patent law to accommodate and encourage technologies that will drive the Fourth Industrial Revolution.
The USPTO’s extended deadline for submitting comments on patent eligibility jurisprudence is October 15, 2021.