Artificial Intelligence as an Inventive Tool and Its Implication to the PHOSITA Standard
Daniel Y. Lee is a J.D. Candidate, 2021 at NYU School of Law.
The age of AI-inventors may already be here. This year saw the first patent applications filed in the name of an AI tool named “DABUS” disclosing designs for a beverage container and a lighting device. In filing the applications, the people behind DABUS raised a provocative question of whether a nonhuman entity (DABUS in this case) can be named an inventor on a patent application. The question is one of many AI-related issues on which the USPTO is seeking comment at the time of this writing, though there are some textual bases for it to be decided in the negative such as the statutory definition of an inventor as an “individual” under 35 U.S.C. § 100 (f), and a “person shall be entitled to a patent” under 35 U.S.C. § 102. Beyond the inventorship issue, however, the prospect of an inventive AI also raises interesting questions about (1) the concept of a Person Having Ordinary Skill In The Art (PHOSITA) and (2) the scope of prior art knowledge deemed to be available to the PHOSITA.
PHOSITA is a legal fiction, similar to the reasonable person in tort law, who
serves as the judge of whether a new development is obvious and therefore not deserving
of a patent. As such, PHOSITA plays a
central role in granting and determining the validity of a patent. Because the level of skill of a PHOSITA
depends on the technology at issue, “[r]esolving the level of ordinary skill in
the pertinent art” is a key step in the obviousness inquiry under Graham. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Under current case law, the level of ordinary
skill is resolved by considering multiple factors that include, among others, the
educational level of the inventor and others in the field, type of problems
encountered in the art, and prior art solutions to those problems. See Envtl. Designs, Ltd. v. Union Oil
Co., 713 F.2d 693, 696 (Fed. Cir. 1983).
as potential inventors start using AI not only as a tool to help them design
and simulate potential inventions, but as a means to generate novel designs
with minimal human intervention, the role of inventors may shift from
generation of ideas from the ground up to directing and providing feedback to
the design-generating AI and determining which of the AI-generated designs satisfy
the inventors’ criteria. DABUS-generated
patent-pending beverage container and lighting device designs showcase such inventive
paradigm where DABUS, with human-selected training data, generated the designs,
which were in turn selected by the human operators for patenting.
such AI-driven inventive paradigm, the level of sophistication of AI may become
just as important as the education level of the inventor and others in the relevant
field. For example, the people behind
DABUS were experts in AI, not people of ordinary skill in the art of beverage
container and lighting device design.
Even under the prevailing view of AI as an inventive tool and not an
inventive entity, the fact that the non-subject matter experts behind DABUS
were able to ‘invent’ by selecting two designs for patenting hints at potential
wrinkles to the PHOSITA standard in light of AI. Should a PHOSITA then be a person having
ordinary AI? Or perhaps the question
that should be asked is whether such AI-generated or AI-assisted invention deserves
the same level of protection as human-generated invention in a Lockean labor theory
sense, and whether such invention needs to be incentivized under the patent
regime. For the time being, the current
statutory regime under 35 U.S.C. § 103
treats all manner of inventing the same, dictating that “[p]atentability shall
not be negated by the manner in which the invention was made.”
implication of the AI-driven inventive paradigm is the breadth of knowledge presumed
to be available to a PHOSITA. A PHOSITA
is famously “envisioned as working in his shop with all the prior art
references — which he is presumed to know — hanging on the walls around him.”
Standard Oil Co. v. Am. Cyanamid Co.,
774 F.2d 448, 454 (Fed. Cir. 1985). This
alluring image has been tempered to limit the presumption of knowledge to analogous
prior art given that no human can possibly consider the entire universe of
prior art including references completely unrelated to the invention at hand. However, an AI on the other hand can parse much
more prior art than a human inventor can ever hope to consider in generating a
new design. Not bound by the limited volume
(and thereby breadth) of prior art that a human inventor can consider in the
inventive process, it may be possible for an AI to consider completely
disparate, non-analogous prior art in generating new designs. In fact, it may soon be possible (or perhaps already
is) with advanced image and natural language processing to train an AI to
consider all of the 10 million US patents granted to date in generating
potentially new designs, without being cabined to particular technology classifications. When such AIs find widespread use among
inventors, the limiting of obviousness analysis to analogous prior art may no
longer be needed, or even appropriate.
Only time will tell whether and when truly inventive AI will arrive, and the full extent of the impact it will have on the inventive paradigm and the PHOSITA standard. When it arrives, however, we will surely have to retire the oft-cited phrase from KSR that a PHOSITA is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
If this post piqued your interest in the implications of inventive AIs on patent law, the article “Everything is Obvious” by Professor Abbott published in the UCLA Law Review may be of interest.