U.S. court will soon rule if AI can legally be an ‘inventor’

Can artificial intelligence (AI) be legally listed as an inventor? After all, if AI can legally invent products, the number of patents on drug-discovery tools will shoot up fast. The issue is currently before a United States court.

The U.S. Court of Appeals heard arguments on that question again last week, and the ruling could affect the pace of AI technology development, particularly within the pharmaceutical and life science industries.

AI learns by doing

A ruling in favor of AI-as-inventor would impact healthcare companies that use the technology to create tools that find new treatments for existing drugs. This technique of re-using drugs, called repurposing or repositioning, is used to treat emerging and challenging diseases, including COVID-19.

AI is increasingly becoming more autonomous, able to perform its functions and find patterns without any human interaction. It also “learns by doing” and becomes better at its job over time. New products can be developed entirely by AI, which raises whether the technology could be listed as the inventor for a patent on a product. Current intellectual property controls call for a human inventor to file for a patent, said Ryan Abbott of Los Angeles law firm Brown Neri Smith and Khan, who argued the case before the U.S. appeals court last week.

“This case is about the future of innovation and how the patent system should deal with technological evolution in the form of increasingly sophisticated AI,” Abbott told VentureBeat.

A favorable ruling would make more AI technologies available to pharmaceutical companies and speed time-to-market and approval for existing medications, Abbott said.

Abbott represented computer scientist Stephen Thaler in the test before the U.S. Court of Appeals for the Federal Circuit. Thaler argued his DABUS AI system should be listed as the inventor for two patents, one in which the machine invented a new beverage container and the second light beacon that flashes in a new way. DABUS is an acronym that stands for ‘device for the autonomous bootstrapping of Unified Science.’

The inventions themselves aren’t a big deal, but the outcome of the case will be, said Baldo Vinti, a partner in the Proskauer Rose law firm’s intellectual property litigation group in New York.

“This decision is going to impact the world at large in the coming years,” he said.

The ruling won’t affect anything in the short term, he added, but in the long term it could generate a whole slew of new patent filings, and potentially increase inventorship challenges in patent litigations in all areas of technology.

Thaler has already waged an effort to win patents for inventions created by DABUS, but so far, his efforts have not met with much success. The South African patent office did award DABUS the right to be listed as the inventor for a patent on the products, but his applications were rejected by the United Kingdom, the European Union and Australia. The U.S. verdict is still awaiting the judge’s ruling, which will likely come before the end of the year.

The three-panel judge seemed skeptical about Abbott’s arguments, Vinti said.

What happens if the judges rule in favor of AI?

For his part, Abbott said the existing U.S. patent law could be interpreted in such a way to allow for AI as inventor. 

“We argue it’s critical to interpret the patent act consistently with its purpose — to promote innovation,” Abbott said. “That’s why the law should allow protection for AI-generated inventions.”

“The entity that conceived of the invention is at issue in this case,” he added. “DABUS is the factual inventor of these products. We argue the factual inventor must be the legal inventor.”

If the ruling allows patents on AI-generated inventions, DABUS would not be the patent holder. Thaler would hold that patent, as a machine can’t own property, Abbott said.

“It’s the same way, if you own a 3D printer that makes an object for you, you own the rights to the object itself,” he said.

Should the judges rule in favor of AI, “you’ll see a lot more patent filings,” Vinti said. “This could open up Pandora’s box if programmers can claim inventorship for AI.” 

The claim to the invention is a big deal because, recently, courts have seen many arguments about “proper inventorship,” Vingi said. “If you name the improper inventor, that patent is dead.” 

Anytime programmers identify themselves as an inventor, he added, “I’ll dig in and see if it was created by AI, and then you could fight over, did you really invent this or did the computer and, if so, what happens?”

No matter how the court decides, the ruling will have a big implication for AI use in life sciences. 

AI innovation in healthcare

A ruling in favor of allowing patents on AI-generated inventions would be a major incentive for healthcare companies to use AI to develop new drugs and repurpose existing drugs, Abbott said.

AI-generated drug discovery is not new. AI searches for patterns among people taking drugs and among the makeup of the drugs themselves to recommend new drug formulations or to identify existing drugs that would also work for another illness or disease. 

Chematica in South Korea and ElemNet in the U.S. are examples of the AI systems that are used for the discovery of new medicines. The patents for the systems developed by those companies are not AI machines; rather, they’re the humans who invented the AI systems.

In a paper for the December 2020 edition of Lancet Digital Health, Yadi Zhou, a data scientist at Cleveland Clinic’s Genomic Medicine Institute, and coauthors write that “AI approaches for accelerating drug repurposing or repositioning are not just formidable but are also necessary.”

AI has been particularly instrumental in COVID-19 research. Scientists have used AIto predict how long patients will remain hospitalized and how they’ll fare. They also detect diseases in lung scans and find the right treatment options, said Caroline Uhler, a MIT computational biologist in MIT’s department of electrical engineering and computer science.

“Making new drugs takes forever,” she said. “Really, the only expedient option is to repurpose existing drugs.”

Healthcare companies are weighing in. Cris Ross, CIO at the Mayo Clinic, told attendees at a December 2020 HIMSS conference that AI has been key to understanding COVID-19.  

For instance, scientists at the University of Michigan’s Center for Drug Repurposing used artificial intelligence to identify 17 existing drugs — including a dietary supplement — that could kill SARS-CoV-2 cells, they published in August 2021 in the Proceedings on the National Academy of Scientists. 

“Traditionally, the drug development process takes a decade, and we just do not have a decade,” said Jonathan Sexton, one of the paper’s senior authors. “The therapies we discovered are well positioned for Phase II clinical trials because their safety has already been established.”

Of course, the use of AI in drug discovery goes well beyond COVID-19 research. Many researchers, like Sexton, would like to see increasing numbers of AI-invented research tools, which would greatly aid their quests for new and repurposed drugs.

A big way to bring those new research tools to market is to allow patents on AI-invented machines, Abbott said. 

He and Thaler are passionate about the subject. Their quest won’t end, no matter the outcome in the U.S. court of appeals ruling. 

“The tools that AI invents are needed for healthcare’s future and for society in general,” he said.

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