Your New AI Coworker: How Working with AI Raises New Patent and Copyright Challenges

If a person uses an AI tool to invent, is that person the inventor? If a person uses an AI tool to write a new book, is that person the author? Recent developments suggest that the answer to these questions is unclear, throwing into doubt whether creative works and useful inventions developed in collaboration with AI are entitled to their respective copyrights and patents.

What is clear is that AI models cannot work without some level of human interaction. After all, it is humans that make, train, operate, and develop AI systems. Further, any result of an AI model requires, at some level, human input. But that input can run across a spectrum. Human input can range from providing detailed instructions for an intended result to merely powering the system on, and everywhere in between. Is there a place on the spectrum where the input provided by a human to produce a specific output is so minimal as to deprive them of copyright or patent protection in the result? And if so, do those rights vest in the people who made the AI system, or the AI system itself? Or does that output fall outside the realm of copyright and patent entirely?

AI as Author and Inventor

Dr. Stephen Thaler of the University of Chicago has explored one end of the spectrum. His perspective is that AI models themselves should be recognized as authors and creators independent of any human. To that end, he developed AI tools that created a work of art called “A Recent Entrance to Paradise” and two potentially patentable inventions on a “Neural Flame” and “Fractal Container.” In Dr. Thaler’s telling, these works and inventions were produced by his AI tools without human input of any kind. The United States Patent and Trademark Office (“USPTO”) rejected Mr. Thaler’s attempts to file patent applications on the inventions on the basis that the applications failed to name a human inventor, and that decision has been affirmed by the Federal Circuit.¹ Additionally, the U.S. Copyright Office (“Copyright Office”) has twice rejected Dr. Thaler’s attempt to register a copyright in his AI-generated work.² Thus, where AI systems allegedly work alone, the USPTO and Copyright Office are agreed that their work product is neither copyrightable nor patentable for lack of a human creator.³

But what about inventions and creative works where humans and AI work collaboratively? Is there a line after which the creative impact of the AI predominates over its human co-worker such that it could deprive the work of copyright or patent protection?

Collaborative AI and Copyright

A recent decision by the Copyright Office explores this idea in the copyright context. Ms. Kristina Kashtanova authored a graphic novel called “Zarya of the Dawn.” While she wrote the story herself, the images in the work were created by Midjourney, a generative AI application. Midjourney is an AI system that produces images based on a text prompt provided by a human. To create the images in the work, Ms. Kashtanova “engineered” hundreds of prompts to obtain the final images for her book, with each new prompt guiding Midjourney closer to her intended result. As she describes, this process produced thousands of images over the course of a year, with only a handful being used in her work.

Despite Ms. Kashtanova’s input, the Copyright Office refused to register the images produced by Midjourney.⁴ In the Office’s view, the images were not copyrightable because of the “significant distance” between Ms. Kashtanova’s prompts and the images. Midjourney was effectively the “master mind” of the output and thus performed the acts that copyright law requires of an “author.”⁵ Copyright law in the United States requires that an author must have sufficient control over the tools they use such that the final image “amounts to the artist’s own ‘original mental conception, to which [they] gave visible form.’”⁶ But when a user uses Midjourney, the images produced are automated and, to some degree, random. The Copyright Office analogized Ms. Kashtanova’s efforts to two scenarios that clarified the Copyright Office’s view. First, Ms. Kashtanova’s efforts were similar to an artist working under a commission, where the commissioner provides guidance about what they want in the final work, but the artist actually puts paint to canvas. In that scenario, the copyright clearly initially vests in the artist. Second, Ms. Kashtanova’s efforts were similar to entering a search into Google and then claiming a copyright in the search results, because they match the user’s “creative vision.”

Collaborative AI and Patents

The USPTO has likewise struggled to provide guidance on the line between human and AI invention. In the Thaler decision, the Federal Circuit cryptically noted that it was not deciding “whether inventions made by human beings with the assistance of AI are eligible for patent protection.”⁷ In response to that single line, the USPTO has solicited comments from the public on a long list of questions in advance of potential rulemaking on the issue.⁸ These include:

• If an AI system contributes to an invention at the same level as a human who would be considered a joint inventor, is the invention patentable under current patent laws?⁹
• Do ownership rights vest solely in the natural person(s) who invented or do those who create, train, maintain, or own the AI system have ownership rights as well? What about those whose information was used to train the AI system?¹⁰
• Should the USPTO require applicants to provide an explanation of contributions AI systems made to inventions claimed in patent applications?¹¹
• Are there situations in which AI-generated contributions are not owned by any entity and therefore part of the public domain?¹²

These questions arise from unsettled areas of inventorship law. Inventorship traditionally vests in one or more natural persons who contribute to the “conception” of the invention, i.e. “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.”¹³ The unspoken assumption in that standard is that the formation in the mind of the inventor is an act of creation, not recognition. That is, the case law doesn’t contemplate a scenario in which the first natural person to understand an invention gained that understanding through reading the output of an AI model, not his own inventive efforts.

This creates considerable practical difficulties in assigning inventorship in inventions made with the assistance of AI. If an AI model conceives of some aspect of an invention, should the AI model be listed as an inventor? Or should the concept of “conception” be broad enough to include the mental act of recognizing an invention created with the assistance of AI? If it is so broad, should it matter whether the natural person who recognized the invention was the user of the AI model, or someone else? For inventive companies, the last question is perhaps the most worrisome. Could it be that inventions developed with the use of AI are simply unpatentable parts of the public domain?

At present, there are more questions than answers.

What This Means For You

Where humans work with AI systems to produce creative works or inventions, the law is currently unclear regarding what part — if any — of those works is copyrightable or patentable. For creative works, the Copyright Office’s decision regarding “Zarya of the Dawn” suggests that AI tools should be limited in their application to valuable creative works to ensure at least some valuable portion retains copyright protection. For inventions, patent applicants should be sure to name human inventors, and be prepared to explain why any AI tool used in the invention’s development did not contribute to the conception of the invention.

¹ Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. Aug. 5, 2022).

² U.S. Copyright Off., Second Request for Reconsideration for Refusal to Register A Recent Entrance Into Paradise(Correspondence ID 1-3ZPC6C3; SR # 1-7100387071) (Feb. 14, 2022) (“Letter”).

³ Mr. Thaler is continuing to press his claims. He has indicated that he will be appealing the Thaler decision to the Supreme Court, and has recently sued the Copyright Office to demand registration of “A Recent Entrance to Paradise.”

⁴ Specifically, the Copyright Office reissued the registration certificate to “Zarya of the Dawn” with a note disclaiming any interest in the images.

⁵ Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 61 (1884) (the “author” of a copyrighted work is the one “who has actually formed the picture,” the one who acts as “the inventive or master mind.”)

⁶ U.S. Copyright Off., Zarya of the Dawn (Registration # VAu001480196), at 9 (Feb. 21, 2023) (citing Burrow-Giles, 111 U.S. at 60).

⁷ Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. Aug. 5, 2022).

⁸ USPTO, Request for Comments Regarding Artificial Intelligence and Inventorship, 88 Fed. Reg. 9492 (Feb. 14, 2023).

⁹ Id. at Question 3.

¹⁰ Id. at Question 4.a

¹¹ Id. at Question 6.

¹² Id. at Question 4.b.

¹³ Burroughs Wellcome Co. v. Barr Labs. Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).