September 14, 2012      

E-COMMERCE TIMES?The idea that robots might be capable of independent thought processes raises a lot of interesting possibilities, not the least of which is the problem of how such robots — and their work products — would be regarded under the law. A robot that invents something entirely on its own, for example, could conceivably be the appropriate patentholder, based on current U.S. law.

Earlier this month, the journal Science published a report about a robot that could formulate hypotheses, perform experiments to test those hypotheses, and thereby contribute to scientific knowledge.

This technological advance raises legal concerns: Based on current law, if a robot conceived the idea for an “invention,” this invention might not have the possibility for patent protection in the United States, possibly leaving the owner or lessee of the robot to depend only on Trade Secret law for the protection of the invention.

The situation might be different under the laws of other countries. However, owners or lessees of such machines in the United States should be forewarned that they may confront difficulties in obtaining patents or other protection for inventions made by such machines.

Independent Thought

Currently, there are many areas of technology in which automated machines or robots are involved in the process of invention. For example, electronic circuit design relies on Monte Carlo analysis using Spice, but this involves human inputs and human analysis of the results.

Existing DNA/amino acid sequencing machines provide inventors with information that inventors later patent, of course. There is a difference, because such machines are automated and not capable of cognition, and much of the inputs into such machines are provided and selected by humans. Also, the resulting data and results are analyzed and verified later by humans.

Another case in point involves high-throughput compound screening to identify promising compounds for pharmaceutical, agricultural and other purposes — but again, the inputs into screening machines are human, and the outputs are analyzed by humans.

There are numerous similar examples. In contrast, the robots discussed in the report in Science seem to have an independent ability to generate and verify hypotheses, perhaps leading, in patent parlance, to independent “invention” by the robot, not the human.

The issue is whether the owner or controller of the robot would be eligible to obtain patent protection for an invention conceived by a robot.

Who not What

American patent law (35 U.S.C. Section 101) limits what is considered patentable subject matter, and limits the invention to the discoverer: “Whoever invents . . . may obtain a patent . . . .” Section 101 uses “whoever” — not “whatever.” In addition, 35 U.S.C. Section 102 says that “a person shall be entitled to a patent unless . . .” (emphasis added), and proceeds to set forth a number of exceptions to patentability.

That preamble to section 102 limits the ability to patent to a person — probably not extending it to a machine. Thus, a person using a robot that might make an invention may face some serious statutory impediments to patent protection.

We might someday ask whether a robot that gains true cognition, or self-awareness, should be considered a “person” for the purposes of patent law.

The situation is compounded by Section 102(f), which states that one cannot obtain a patent if “he did not himself invent the subject matter sought to be patented.” Thus, Section 102(f) prevents one from obtaining valid patent protection if the idea in question comes — even in private — from another source (e.g., a robot).

Of course, there is the possibility that the programmer of the robot could be the inventor if the robot were given the hypotheses to test and parameters to evaluate, in which case the human would probably be the inventor on the theory that the robot was simply the “hands of the inventor.” But that does not seem to be the case with the robot reported in the Science article.

Wiggle Room

As mentioned previously, another potential protection for robotic inventions might be found in U.S. Trade Secret law. However, situations would probably arise in which, once a robotic invention were commercialized, the invention could readily be reverse engineered.

Reverse engineering of an unpatented product cannot be prevented under Trade Secret law, which could cause the product developer to regret not having patent protection. Also, Trade Secret law does not prevent subsequent independent development by another.

European law provides an illustration of how things might be different in other countries. Article 58 of the European Patent Convention sets forth the “entitlement to file a European patent application” thusly: “A European patent application may be filed by any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it.”

That language seems to provide some wiggle room for the possibility of a robot being an inventor in Europe. Yet one would still have to name the inventor on a European patent application, which leads to an interesting question: Would the robot’s central processor be listed as the inventor? If so, it might need to be identified by serial number and where it resides. Interesting possibilities. Trade Secret law — at least in terms of reverse engineering and independent development — is quite similar in Europe and the U.S.

If a robot were to be or become an “inventor” under the laws of the U.S. or Europe, it would seem that the owner or lessee of the robot would probably be the owner of the “invention” rather as employers are generally the owners of employees’ inventions.

However, owners or lessees of such robots should do something akin to what employers do with employees: still get solid written contracts from the developers of the robots to make sure robot inventions are owned by the owner or lessee.

Patented by HAL 9000?

One final thought: We might someday ask whether a robot that gains true cognition, or self-awareness, should be considered a “person” for the purposes of patent law.

Although the question may seem a long way off — and perhaps a bit too much for any court to decide now — that day may be coming sooner than we expect.