Oh, patents! Couldn’t an AI system be granted patents?

Copyright © Françoise Herrmann 

If, according to Yuval Noah Harari*, an AI system is the first tool in history to take decisions, execute them, and generate knowledge, in contrast to all previous tools, you might legitimately wonder whether an AI system could be granted patents, just like human inventors. Indeed, couldn’t an AI system generate completely new, useful, and non-obvious things? And in this case, why wouldn’t an AI system be awarded a patent?  

For example, Stanford computers trained to learn biology, using a ChatGPT-type program and millions of raw cell biology data, were able to recognize and identify Norn kidney cells, in just six weeks, whereas it took science 134 years to do likewise (Zimmer, 2024). Norn cells secrete the erythropoietin hormone, which stimulates red blood cell production in bone marrow. If an AI system not only sorts and organizes raw data in efficient ways, according to criteria that are provided, but also recognizes and classifies previously unconnected cell data, doesn’t that mean that an AI system will at some point make discoveries that are vital and non-obvious to a biologist skilled in the art, and therefore patentable? That is the question for which the United States Patent and Trademark Office (USPTO) has recently provided Inventorship guidance for AI-assisted inventions (Federal Register).

Inventorship guidance issued following several Requests for Public Commenting (RFC)** on patenting AI-assisted inventions, since August 2019, and more recent meetings with the stakeholder community, as well most recently, President Biden’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, on Oct. 30th, 2023. Inventorship guidance published in the United States Federal Register on February 13, 2024, effective for all patent applications (utility, design, and plant) filed before, on, or after that date. Effective with the understanding that USPTO Inventorship guidance is agency policy, without the force of law. 

According to Section II of the Inventorship guidance set forth by the USPTO, titled: “Inventors and Joint Inventors Named on U.S. Patents and Patent Applications Must Be Natural Persons” the question of whether an AI system can generate a patentable invention is clearly “no”, even if the use of AI in innovation is largely embraced. The reasons for the clarity of the Inventorship guidance are that, per the specifications of US Patent Law (United States Code,Title 35, Section 100(f)) only an “individual”, understood to be a natural person, can be awarded a patent. This specification of Patent Law also applies to joint inventorship (USC 35, Section 100(g)), which means that even if an invention is AI-assisted, the assisting AI system cannot be considered a joint individual (i.e., a natural person inventor). Conversely, an invention in which AI has played an important role is not un-patentable, as long as one or more natural persons significantly contributed to the invention. 

Significant contribution, which the Inventorship guidance also addresses in a series of non-exhaustive guiding principles. Guiding principles to significant contribution based on the notions that simply querying an AI System for an output that might be identified as an invention is insufficient. The significant contribution of a natural person inventor lies in the conception of the prompt devised to elicit an output, and in the significant contribution to the construction (design, training and building) of the output which might be interpreted as an invention (vs. reduction to practice alone).

In other words, the current Inventorship guidance does not deny that an AI system could be instrumental in creating an invention. However, the Inventorship guidance clearly specifies that such a system cannot be listed as an inventor because such a system is not a natural person.  

Far from definitive, considering the evolving developments of AI, and the ways in which the courts will decide and adjudicate on various cases of inventorship in AI-assisted inventions, the USPTO considers their Inventorship guidance an iterative process, which the public is invited to continue commenting. Specifically, the Inventorship  guidance published at the Federal Register specifies: 

"The USPTO views the inventorship guidance on AI-assisted inventions as an iterative process and may continue with periodic supplements as AI technology continues to advance and/or as judicial precedent evolves. The USPTO invites the public to submit suggestions on topics related to AI-assisted inventorship so it can address them in future guidance supplements.”

  

Notes:

*Author of the NYTimes best-selling trilogy Sapiens, Homo Deus, and 21 Lessons for the 21^st Century, and Israeli Professor of history at the Hebrew University, in Jerusalem. 

**Comments from the RFCs, uploaded to Regulations.gov, may be consulted at: https://www.regulations.gov/. The docket number is PTO-P-2023-0043. Comments from the stakeholder community include, for example, those of Amazon and Google Inc. The comments refer to the USPTO Guidance on inventorship and AI-assisted inventions, published on February 13, 2024 in the Federal Register. USPTO Guidance that was twice opened for public commenting.  

References

Biden, J. (Oct. 30, 2023). Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.

https://www.whitehouse.gov/briefing-room/presidential-actions/2023/10/30/executive-order-on-the-safe-secure-and-trustworthy-development-and-use-of-artificial-intelligence/

David, E. (Feb. 14, 2024). Patent office confirms AI can’t hold patents. The Verge.  

https://www.theverge.com/2024/2/13/24072241/ai-patent-us-office-guidance 

Federal Register – Inventorship guidance for AI-assisted invention. 

https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions 

Harari, Y.N.  (2011). Sapiens: A brief history of humankind. New York, NY: Harper Perennial

Harari, Y.N. (2015). Homo Deus: A history of tomorrow. London, UK: Penguin Books. 

Harari, Y.N. (2019). 21 lessons for the 21^st Century.  New York, NY: Random House. 

Harari , Y.N. (May 14, 2023). AI and the future of humanity.

https://youtu.be/LWiM-LuRe6w  

USC Title 35, Section 100 (f) and (g).
https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e302338313

USPTO - Department of Commerce (Feb. 13, 2024). Inventorship guidance for AI-assisted inventions. [Docket No. PTO-P-2023-0043]

https://public-inspection.federalregister.gov/2024-02623.pdf 

Yuval Noah Harari (website)

https://www.ynharari.com/ 

Zimmer, C. (March 10, 2024). AI is learning what it means to be alive?

https://www.nytimes.com/2024/03/10/science/ai-learning-biology.html 

USPTO kids!

Copyright © Françoise Herrmann

Got kids? Got teens? You, a parent or a teacher? 

You are welcome to the USPTO Kids website where you will find lots of activities to inspire you, freebies to download, and videos to see!

• Patent-pending freebie wallpaper for your computer!
• The patent-holder, Inventor card series, with new cards released since 2012! 
• Videos of 3-D printing, anti-counterfeiting devices, biofuels and biometrics!
• Colouring pages, Build an invention (medium level) or Spot the invention (expert level) activities!
• USPTO collaborator links to Camp Invention, Energy KIDZ, Kids.gov, NASA Kids Club, Maker Education Initiative or Smithsonian Kids, for example! 
• Meet the Team:  Ms Pat. Pending and CRS the Robot Cat,  Mark Trademan and T.Markey!

Visit and enjoy!

References
USPTO KIDS
https://www.uspto.gov/kids/index.html
USPTO - KIDS - Collective cards
https://www.uspto.gov/kids/cards.html 
USPTO - KIDS - Downloads
https://www.uspto.gov/kids/downloads.html 
USPTO - KIDS - Videos
https://www.uspto.gov/kids/videos.html
USPTO- KIDS - Activities
https://www.uspto.gov/kids/activities.html
Camp Invention
http://campinvention.org/ 
Energy KIDZ
http://www.eia.gov/kids/
Kids.gov
https://kids.usa.gov/
NASA Kids Club
https://www.nasa.gov/kidsclub/index.html
Smithsonian Kids
http://si.edu/Kids
Maker Education Initiative
http://makered.org/

Oh, patents! USPTO Numbers from the Patent Librarian

Copyright © Françoise Herrmann

Do you know how many US patent were published in 2014, or “since the beginning of (US) time” as Google is fond of including as a history parameter?

You might find all of these answers on the Dashboards of the USPTO Visual Data Center, which literally change before your eyes!

But if you want the answers to your questions already culled and organized in a short and concise report, then you might consult The Patent Librarian, who has just posted a short summary of US Patent Statistics and Numbers for 2014.

The Patent Librarian estimates that sometime near the end of March 2015 the USPTO will be issuing patent No. 9,000,000, which means the USPTO has granted that many patents since provisions for a patenting system were included in Article 1, Section 8 of the US Constitution in 1789 and the Patent Act of 1790, one year later.

With a staff of 10,000 at the USPTO in Alexandria, a total of 706,533 documents published in 2014, including applications and those patents granted, across all categories (utility, design and plant).

That’s a lot of inventive activity, not necessarily all happening in the US, since inventors from abroad also seek to patent their work in the US.

I am enclosing a copy of the USPTO Dashboard for Jan 2015 Backlogs, that is, all the unexamined patent applications (utility, design, plant and re-issue) waiting for action at the USPTO in Jan 2015, in the amount of 602265 applications.

References

USPTO Visual Data Center Dashboards

http://www.uspto.gov/dashboards/patents/main.dashxml

US constitution (archives.gov)

http://www.archives.gov/exhibits/charters/constitution_transcript.html

Patent Librarian’s Notebook

http://patentlibrarian.com/

Patent Librarian's Notebook - US Patent Statistic and Numbers for 2014

http://patentlibrarian.com/2014/12/31/u-s-patent-statistics-and-numbers-for-2014/ 

Patents for Humanity 2013 – Identifying counterfeit drugs

Copyright © Françoise Herrmann

It is controversial enough that patented and life-saving drugs are often unavailable for treatment in Third World countries, for reasons ranging from costs and licensing fees [Chneiweiss, 2003] to distribution bottlenecks [Esmail, et al., 2010] and drug development protocols [WHO3, 2014]. But there are other problems plaguing the delivery of drugs to places like Sub-Saharan Africa and South East Asia. One such problem is the Black Market of counterfeit drugs and health-related products [WHO2, 2006; WHO4]. A market estimated (with obvious difficulty) to operate, per year, at various significant amounts, in the billions of dollars, according to different sources (e.g.; 32 billion USD per year in 2011 with a 5-year projected amount of 62 billion USD [Global HealthCare, 2011], or at an estimated 75 billion USD in 2014 according to the WHO [WHO5]). Also a market responsible for the deaths of many thousands of people per year [WHO5].

There are no less than 131 WHO (World Health Organization) Drug Alerts for known falsified or contaminated pharmaceutical products, such as for example:  antimalarial drugs with less than 2% of the active ingredient; emergency contraceptives with no active ingredient; cough syrup with a contaminated active ingredient causing the death of at least 50 people; tainted anti-angina heart medicine also causing deaths, and tainted anti-meningitis medication in 1995 causing 2500 deaths in Nigeria [WHO1].

In response to the dangers and toll of counterfeit drugs, Sproxil, Inc. developed a simple to use, text message and mobile phone-based technology to uncover counterfeit medicine, in direct communication with the pharmaceutical industry or third party data processing centers.

This technology, invented by Gogo Ashifi and Zecha Alden, was awarded the patent US13081882 titled SYSTEMS AND METHODS FOR VERIFYING AUTHENTICITY OF A PRODUCT and was also selected in 2013 as recipient of a USPTO Patent for Humanity Award.

 

The invention discloses patented tamper-evident packaging with a unique identifier, located within or as part of the tamper-evident packaging. The identifier is additionally sensitive to environmental conditions. This bonus part of the invention means, for example, that if the product is sensitive to heat, then the identifier will also signal exposure to heat, at the level or length of time deemed detrimental to the product, using calibrated and heat-sensitive ink. In other words, environmental conditions are included in the definition of tampering, and there is no intervention required on the part of the end-user to determine whether the product is damaged.

 

Thus, to determine the authenticity of a product,  the end-user just sends the product code (with a few more visible digits considering heat reactions, whenever this applies) via text-message and receives an instantaneous response to indicate the validity of the product or other information such as “recalled”, “used” “stolen” or “diverted” etc., that may be tagged to the unique code.

Below appears the abstract for US13081882, titled SYSTEMS AND METHODS FOR VERIFYING AUTHENTICITY OF A PRODUCT:

Various aspects of the invention provide systems and method for verifying authenticity of a product. Another aspect of the invention provides a system including: a tamper-evident package; and a unique identifier usable to verify the authenticity of the product, the unique identifier contained within the tamper-evident package. The unique identifier cannot be detected from outside of the tamper-evident package without demonstrating evidence of tampering. Another aspect of the invention provides a system including: a tamper-evident package; and a concealed unique identifier coupled to the tamper-evident package. Another aspect of the invention provides a method of providing a providing a unique identifier. The method includes: providing a tamper-evident package; and placing the unique identifier within the tamper-evident package, wherein the unique identifier cannot be detected from outside of the tamper-evident package. [Abstract US13081882] 

Although this invention was designed to address the problem of counterfeit drugs in the Third World where it is endemic, and the invention was the recipient of a 2013 USPTO Humanitarian Award, the scope of the invention is clearly much broader. Indeed, the invention has broader and disclosed applications to other counterfeit consumer products that are packaged or labeled, such as electronic media, foodstuff, luxury goods, cosmetics..etc.  And this invention also has a broader client (or patient) base than the recognized Third World parties, since the United States is also plagued with counterfeit medicine, albeit at an estimated lesser degree than the Third World [FDA1]. 

 

 

 

References

Chneiweiss, H. (2003) Sur les rivages de la misère : Épisode 1 : Le marché des médicaments essentiels. M/S – Médecine Sciences,  vol 19(8&9), pp. 892-894.

Esmail, L. C., Phillips, K., Kuek, V., Perez Cosio, A.  and J. C. Kohler  (2010) Framing access to medicines in developing countries: An analysis of media coverage of Canada’s Access to Medicine Regime, BMC International Human Rights, 10(1).

[FDA1] – Counterfeit Medicine

http://www.fda.gov/drugs/resourcesforyou/consumers/buyingusingmedicinesafely/counterfeitmedicine/default.htm

[Global Healthcare] – 2011 The financial pull of counterfeit drugs

http://www.healthcareglobal.com/financeinsurance/66/The-financial-pull-of-counterfeit-drugs

[WHO1] - Drug Alerts http://www.who.int/medicines/publications/drugalerts/drugalertindex/en/

[WHO2]  (2006) - Combating counterfeit drugs: A concept paper for effective international cooperation.

http://www.who.int/medicines/events/FINALBACKPAPER.pdf  

[WHO3] – Ethical considerations for the use of unregistered interventions for Ebola Virus disease

http://apps.who.int/iris/bitstream/10665/130997/1/WHO_HIS_KER_GHE_14.1_eng.pdf?ua=1

[WHO4] – General information on counterfeit medicine

http://www.who.int/medicines/services/counterfeit/overview/en/

[WHO5] Growing threat from counterfeit medicines

http://www.who.int/bulletin/volumes/88/4/10-020410/en/

Patents for Humanity – USPTO Awards Program

Copyright © Françoise Herrmann

The USPTO call for submissions to the Patents for Humanity program is extended to October 31, 2014. 

This competitive program, organized by the USPTO (United States Patent and TradeMark Office), is designed to recognize patent owners, assignees and applicants, whether businesses, non-profits or universities, who have contributed a patented invention for humanitarian purposes. In particular, this means an invention that is designed to help underserved populations of the world and/or uses technology to solve major global problems, in five categories: medicine, nutrition, sanitation, household energy and living standards. 

The program's 10 awards and 6 honorable mentions reward the selected winners with public recognition at a USPTO sponsored awards ceremony and acceleration of certain USPTO processes related to a patent application, such as the application process, ex parte reexam, or an ex parte appeal to the Patent Trial and Appeal Board.

The program was piloted in 2012 as part of President Obama’s Global Development Initiative, “encouraging game-changing innovations to solve long-standing development challenges” and the program was renewed in February 2014 (USPTO Press Release, 2014). 

The 2013 Patents for Humanity awards included such recipients as:

• UC Berkeley (UCB) for ways of producing lower cost and more reliable anti-malarial compounds; 
• Becton Dickinson (BD) for creating a fast, accurate TB diagnosis machine and placing 300 systems in 22 High Burden Countries, and
• Sproxil, Inc., for deploying a system to identify counterfeit drugs with an ordinary cell phone in sub-Saharan Africa (Patents for humanity, 2013).

The USPTO screened and accepted list of contending entries for this year’s 2014 Patents for humanity awards is displayed in a public gallery at: https://p4h.skild.com/skild2/p4h/viewEntryVoting.action

Among the 2014 contending inventions, there are four such viewable applications:

•  Device to prevent hypothermia in pre-term babies in low resource setting - The device is called the IncuPouch™, the inventor is Prasanga Lokuge, and the entry concerns the humanitarian use of technology described in US 20120234877 A1 titled Infant carrier and US 20080149674 A1 titled Infant Carrier.
• Cardiopulmonary lightening protection garment – a garment made of conductive fabric that prevents lightening from passing through the body and causing cardiopulmonary arrest. The company is Zoltar Technology, the inventor is Dan Schlager, and technology used for humanitarian purposes is described in US 20130298319 A1 titled Cardiopulmonary lightening protection garment. 
• Portable neonatal intensive care unit (NICU) – a unit with reduced electrical power requirements that provides both heat, or cooling, for the infant patient, using water circulating through a heat exchanger. The company is called Designs for the world, LLC, the devices are called the Tokü™ incubators and the technology used for humanitarian purposes is described in US 20100168502 A1 titled Modular neonatal intensive care system.
• Disaster Emergency Assessment Notification (DEAN) – A mobile app designed to track people in an emergency situation using QR codes. (Blaster Communications Inc.) 

Considering the 45-day extension period for filing entries, there is still time to compete! Here is the link for submitting application forms: 

http://www.uspto.gov/patents/init_events/patents_for_humanity/pfh_info.jsp#HowtoApply 

References
- Press release: USPTO renews Patents for Humanity Program
http://www.uspto.gov/news/pr/2014/14-10.jsp
- Patents for humanity 2013 Award recipients
http://www.uspto.gov/patents/init_events/patents_for_humanity/awards2013.jsp