United States: When Innovation Invents: Artificial Intelligence Issues At The U.S. Patent And Trademark Office

In Short

The Situation: Artificial intelligence ("AI") is growing more powerful and gaining application in many areas. AI can now create new innovation on its own, without a human inventor—a capability that will only expand as technology progresses. Whether patent protection should be available for innovation invented by AI remains an open and pressing issue.

The Result: Two recent patent applications seek patent protection for inventions that were created autonomously by AI without a human inventor. The applicants want the AI to be deemed the inventor and the AI's owners to receive the patent rights. The United States Patent and Trademark Office ("PTO") is now exploring the relationship between AI and patent law, seeking public comment by October 11, 2019.

Looking Ahead: The two patent applications, and the PTO's examination of AI-related issues, may set the stage for future AI innovation. Entities that use AI in their creative processes should track these developments and adjust the use of AI accordingly to become eligible for patent protection.

Intellectual property rights find their root in the United States Constitution, which grants Congress the power "[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." It has long been understood that the terms "authors" and "inventors" refer to human beings. The Patent Act repeatedly refers to "persons" as inventors, while courts have taken a similar approach, holding for example that only a natural person—not a corporation—can be an inventor. Recently, however, questions have arisen about whether intellectual property protection extends to technologies invented by AI. In other words, what happens if AI invents something that would be patentable if it had been invented by a human being?

This question is no longer just a theoretical inquiry discussed among patent practitioners. A team from the University of Surrey recently filed two patent applications in the PTO and the European Patent Office in which an AI system called "DABUS" (short for "Device for the Autonomous Bootstrapping of Unified Sentience") is the named inventor. Human researchers developed DABUS to generate ideas and then determine which are the most novel, useful, or valuable. DABUS then "invented" the two inventions without human intervention—an improved beverage container and a "neural flame" device used in search-and-rescue missions.

Notwithstanding the lack of human inventor, the Surrey team argues that these inventions should still qualify for patent protection. The team does not assert that the AI should own the patents, but rather that ownership should run to the owner of the AI. This arrangement would allow IP protection for innovations invented by AI, while allowing humans to reap the benefits.

The Surrey team's patent applications raise more questions than they answer. Innovations developed by AI, whether in whole or in part, are new and evolving. The DABUS applications are test cases, feeling out how the law may develop. But as AI continues to grow more powerful, innovations developed by the AI itself will likely become more common.

AI innovation has already drawn the attention of the PTO. In addition to hosting a conference on AI earlier this year, the PTO recently announced that it will broadly explore its approach to AI and is seeking public input on a variety of AI-related issues. Among other things, the PTO has asked for input on whether current concepts of inventorship need to be revised to address situations where AI has contributed to the conception of an invention, whether there are any patent eligibility considerations unique to AI inventions, and whether AI impacts the level of ordinary skill in the art. The deadline for submitting comments to the PTO is October 11, 2019. This process may lead the PTO to offer further guidance on the topic.

As AI technology evolves, it will continue testing different areas of IP law and policy. For example:

  • How creative must AI be for it—and not the human who creates or directs the AI—to qualify as the inventor? And is it wise to incentivize the use of wide-roaming, undirected AI that is creative enough to meet this bar?
  • Will the pace of AI innovation allow a small number of AI owners to patent too many inventions too quickly?
  • How will AI handle the existing—or revised—procedural requirements for patent applications and litigation, such as discovery and the oath or declaration required by statute?

These questions are no longer so far in the distance. To be sure, the technology is still developing, and undirected AI is not yet inventing much. But the nascent technology makes the Surrey team's patent applications and the PTO's evaluation especially challenging and important.

The recent patent applications, and the PTO's examination of AI-related policy, may set the stage for the future of AI innovation—even before the technology has come into its own. On the one hand, if AI can be treated as the inventor, with ownership rights flowing to the AI's owner, then AI innovation may grow much more lucrative and set off a race. On the other hand, if AI is not considered an inventor, then entities using AI to generate ideas should make sure that humans continue to be sufficiently involved to qualify as the inventors. And as this technology unfolds, so will the issues of IP law and policy.

Three Key Takeaways

  1. Two patent applications are testing whether artificial intelligence can qualify as an inventor under U.S. patent law, even as AI is still an emerging technology.
  2. The PTO is considering, and seeking public input on, its approach to AI. Those who wish to provide comments to the PTO on these issues must do so by October 11, 2019.
  3. The recent patent applications and PTO evaluation may set the course for future AI innovation, exploring new questions of law and policy.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Fenwick & West LLP
Cowan Liebowitz & Latman PC
Wolf, Greenfield & Sacks, P.C.
In association with
Practice Guides
by Mondaq Advice Centers
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Fenwick & West LLP
Cowan Liebowitz & Latman PC
Wolf, Greenfield & Sacks, P.C.
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions