Tag: Tabrez Ebrahim

Categories
Innovation Patents

Professor Tabrez Ebrahim on Clean and Sustainable Technological Innovation

The following post comes from Associate Professor of Law Tabrez Ebrahim of California Western School of Law in San Diego, California.

one lit lightbulb hanging near unlit bulbsBy Tabrez Ebrahim

What role should patent law have in promoting environmentally friendly, clean, and sustainable technology innovation? Does patent law provide adequate incentives for inventions and innovation that address environmental problems?

Clean technology refers to measures, products, or services that reduce or eliminate pollution or waste. Sustainable technology refers to the design of products that offer environmentally friendly alternatives that prevent waste, are less toxic, use renewable feedstock, use safer solvents and reaction conditions, or increase energy efficiency. In my new paper, Clean and Sustainable Technology Innovation, I provide a narrative review of various environmental innovation approaches and incentives for technology development and diffusion. Scholars and commentators have analyzed the role of patents in facilitating technological development to mitigate climate change, including an eco-patent commons, a fast track program, a patent rewards system, and a collaborative and cooperative platform.

I analyze the literature to show that patent law offers certain underutilized opportunities to promote technological innovation that has environmental benefits. I conducted a semi-systematic review on academic papers concerning clean and sustainable technologies and various patent law-related innovation proposals. In so doing, I provide a synthesis of law and policy papers to identify and understand scholarly views of patents in inducing environmental innovation.

The importance of developing clean and sustainable technologies has included government-driven initiatives to accelerate patenting procedures and expediting of patent application examination of such technologies. The United States Patent & Trademark Office (USPTO) had a fast-track program, the Green Technology Pilot Program, which had reduced the time to attaining a patent for environmental innovations, but this program ended in 2012. Other proposals have included international initiatives that foster a collaborative and cooperative platform to make clean and sustainable technologies more freely available through the sharing of patents that were involved or created during the cooperation and through mechanism to promote mutually agreeable terms. The deployment of clean and sustainable technologies could depend on whether these technologies are patented, licensed, or shared in a pool, and on what technological substitutes are available.

The theoretical underpinning of clean and sustainable inventions is their ability to produce positive externalities, a term which refers to the producing of environmental benefits beyond the implementing firm. Environmental-centric inventions and innovations could generate salutary effects for members of society far beyond the inventor or firm that implements the invention. As a result, more investors may be interested in startups that develop environmental solutions, and business activity in this sector should multiply. While the time and cost of clean and sustainable deployment and climate change mitigation can be an important consideration, the opportunities to provide environmental benefits should be of greater importance. There are a number of innovation policy issues for incentivizing inventors, innovators, and businesses to continue to develop environmental solutions.

I discuss more about these issues in my paper, which was selected by a faculty editorial board and was part of a faculty-edited blind peer review process. This paper is published in Current Opinion in Environmental Sustainability and can be downloaded here.

Categories
CPIP Roundup

CPIP Roundup – December 2, 2020

Greetings from CPIP Executive Director Sean O’Connor

Sean O'Connor

I hope you had an enjoyable, restful Thanksgiving. At CPIP, we’re winding down 2020 while planning our spring and summer events—including biopharma and copyright roundtables, the 2021 WIPO-CPIP Summer School on Intellectual Property, and more.

As usual, our team has been up to many great things. Director of Copyright Research and Policy Sandra Aistars’ Arts & Entertainment Advocacy Clinic co-hosted a virtual clinic with Washington Area Lawyers for the Arts (WALA). The event was a huge success. You can read our write-up here, and a recording of the Rock Creek Kings’ featured performance is available here. Sandra also participated in a November 12 panel hosted by the Law of Intellectual Property (LIP) student organization at the University of Oregon School of Law (home to CPIP Senior Scholar Eric Priest).

I taught my annual workshop on “Public-Private Partnerships–Innovation and Technology Transfer” in the CEIPI-WIPO-INPI Advanced Training Course on Intellectual Property, Technology Transfer and Licensing. I also published an op-ed at The Hill on price controls, explaining why the government cannot seize or bypass pharmaceutical patents.

Our affiliates have also been doing great things as well. Scalia Law Alumna and Arts & Entertainment Advocacy Clinic Adjunct Professor Terrica Carrington and Lateef Mtima of Howard University School of Law and IIPSJ have great quotes in this Billboard article on choreography, copyright, and social justice. CPIP Senior Fellow for Innovation Policy Jonathan Barnett continues to blog at Truth on the Market; you can catch his latest piece here and read his take on how antitrust law can be abused to promote unproductive rent-seeking. Meanwhile Chris Holman, CPIP Senior Fellow for Life Sciences, continues writing for the Biotechnology Law Report, where he serves as Executive Director; his latest article is available here.

Below we highlight new papers from CPIP Edison Fellows Christa Laser (Equitable Defenses in Patent Law), Talha Syed (Owning Knowledge: A Unified Theory of Patent Eligibility), and Tabrez Ebrahim (Artificial Intelligence Inventions & Patent Disclosure).

While 2020’s end-of-year holiday season may well be challenging, I hope you and yours will find a way to share the spirit and renewal of this coming season while looking forward to a successful new year!

Spotlight on Scholarship

a pair of glasses, an apple, and a stack of books

The scholars from our Thomas Edison Innovation Fellowship program continue to publish high quality scholarship and cutting-edge research that promotes the value of intellectual property. Here are some recent publications:

Tabrez Y. Ebrahim, Artificial Intelligence Inventions & Patent Disclosure, 125 Penn. St. L. Rev. 147 (2020)

In his new paper at Penn State Law Review, Artificial Intelligence Inventions & Patent Disclosure, Professor Tabrez Ebrahim of California Western School of Law claims that AI fundamentally challenges disclosure in patent law, which has not kept up with rapid advancements in AI, and seeks to invigorate the goals that patent law’s disclosure function is thought to serve for society. In so doing, Prof. Ebrahim assesses the role that AI plays in the inventive process, how AI can produce AI-generated output (that can be claimed in a patent application), and why it should matter for patent policy and for society. He also introduces a taxonomy comprising AI-based tools and AI-generated output that he maps with social-policy-related considerations, theoretical justifications and normative reasoning concerning disclosure for the use of AI in the inventive process, and proposals for enhancing disclosure and the impact on patent protection and trade secrecy.

To read our blog post summarizing the paper, please click here.

Christa J. Laser, Equitable Defenses in Patent Law, 75 U. Miami L. Rev. 1 (2020)

In patent law, equitable defenses can play an essential role in multi-million-dollar patent infringement cases. Unclean hands, misuse, or estoppel can render a potential verdict unenforceable. Professor Christa Laser of Cleveland-Marshall College of Law dives into the unique and unsettled role of equity in her new paper, Equitable Defenses in Patent Law, which is forthcoming at the University of Miami Law Review. Prof. Laser compares two theories to determine how courts might interpret undefined language governing equitable defenses in patent statutes, and she analyzes whether Congress codified preexisting decisional law or expanded it with the 1952 Patent Act. Finally, Prof. Laser suggests that Congress could delegate its authority to an agency to handle the ever-changing patent landscape.

To read our blog post summarizing the paper, please click here.

Talha Syed, Owning Knowledge: A Unified Theory of Patent Eligibility (forthcoming)

In his new draft paper, Owning Knowledge: A Unified Theory of Patent Eligibility, Professor Talha Syed of Berkeley Law argues that the confusion surrounding patentable subject matter under Section 101 is two-fold. First, it results from our failure to develop a functionality doctrine that can clearly distinguish technological applications of knowledge from other forms of knowledge. Second, he offers a root cause of this failure. There is a distracting preoccupation in patent law with “physicalism,” that is, the notion that a patent is awarded for a thing (tangible or not) rather than for knowledge of that thing. In order to move forward, Prof. Syed states that we must first unwind the physicalist assumptions that are tangled up in our Section 101 analyses. Only then can we develop a functionality doctrine free of those encumbrances.

To read our blog post summarizing the paper, please click here.

Categories
Patent Law

Professor Tabrez Ebrahim on Artificial Intelligence Inventions

The following post comes from Associate Professor of Law Tabrez Ebrahim of California Western School of Law in San Diego, California.

a pair of glasses, an apple, and a stack of booksBy Tabrez Ebrahim

Artificial intelligence (AI) is a major concern to the United States Patent and Trademark Office (USPTO), for patent theory and policy, and for society. The USPTO requested comments from stakeholders about AI and released a report titled “Public Views on Artificial Intelligence and Intellectual Property Policy.” Patent law scholars have written about AI’s impact on inventorship and non-obviousness, and they have acknowledged that the patent system is vital for the development and use of AI. However, there is prevailing gap and understudied phenomenon of AI on patent disclosure. The Center for Protection for Intellectual Property (CPIP) supported my research in this vein through the Thomas Edison Innovation Fellowship.

In my new paper, Artificial Intelligence Inventions & Patent Disclosure, I claim that AI fundamentally challenges disclosure in patent law, which has not kept up with rapid advancements in AI, and I seek to invigorate the goals that patent law’s disclosure function is thought to serve for society. In so doing, I assess the role that AI plays in the inventive process, how AI can produce AI-generated output (that can be claimed in a patent application), and why it should matter for patent policy and for society. I introduce a taxonomy comprising AI-based tools and AI-generated output that I map with social-policy-related considerations, theoretical justifications and normative reasoning concerning disclosure for the use of AI in the inventive process, and proposals for enhancing disclosure and the impact on patent protection and trade secrecy.

AI refers to mathematical and statistical inference techniques that identify correlations within datasets to imitate decision making. An AI-based invention can be either: (1) an invention that is produced by AI; (2) an invention that applies AI to other fields; (3) an invention that embodies an advancement in the field of AI; or (4) some combination of the aforementioned. I focus on the first of these concerning the use of AI (what I term an “AI-based tool”) to produce output to be claimed as an invention in a patent application (what I term “AI-generated output”).

The use of AI in patent applications presents capabilities that were not envisioned for the U.S. patent system and allows for inventions based on AI-generated output that appear as if they were invented by a human. Inventors may not disclose the use of AI to the USPTO, but even if they were to do so, the lack of transparency and difficulty in replication with the use of AI presents challenges to the U.S. patent system and for the USPTO.

As a result of the use of AI-based tools in the inventive process, inventions may be fictitious or imaginary, but appear as if they had been created by humans (such as in the physical world) and still meet the enablement and written descriptions requirements. These inventions may be considered as being either imaginary, never-achieved, or unworkable to the inventor, but may appear as if they were created, tested, or made workable to reasonable onlookers or to patent examiners.

The current standard for disclosure in patent law is the same for an invention produced by the use of AI as any invention generated by a human being without the use of AI. However, the use of AI in the inventive process should necessitate a reevaluation of patent law’s disclosure function because: (1) AI can produce a volume of such fictitious or imaginary patent applications (that meet enablement and written descriptions requirements) that would stress the USPTO and the patent system; and (2) advanced AI in the form of deep learning, which is not well understood (due to hidden layers with weights that evolve) may insufficiently describe the making and using of the invention (even with disclosure of diagrams showing a representation of the utilized AI).

Such AI capabilities challenge the current purposes of patent law, and require assessing and answering the following questions for societal reasons: Should patent law embrace the unreal fictitious and imaginary AI-generated output, and if so how can the unreal be detected in patent examination from disclosure of that created by a human? Should inventors be required to disclose the use of AI in the inventive process, and should it matter for society?

Patents are conditioned on inventors describing their inventions, and patent law’s enablement doctrine focuses on the particular result of the invention process. While patent doctrine focuses on the end state and not the tool used in the process of inventing, in contrast, I argue that the use of AI in inventing profoundly and fundamentally challenges disclosure theory in patent law.

AI transforms inventing for two reasons that address the aforementioned reasons for reevaluation of patent law’s disclosure function: (1) The use of an AI-based tool in the invention process can make it appear as if the AI-generated output was produced by a human, when in fact, it was not so; and (2) even if an inventor disclosed the use of an AI-based tool, others may not be able to make or use the invention since the AI-based tool’s operation may not be transparent and replicable. These complexities require enhancing the disclosure requirement, and in so doing, present patent and trade secret considerations for society and for inventors.

The USPTO cannot reasonably expect patent examiners to confirm whether the patent application is for an invention that is fictitious or unexplainable in an era of increasing use of AI-based tools in the inventive process, and heightened disclosure provides a better verification mechanism for society. I argue that enhanced patent disclosure for AI has an important role to play in equilibrating an appropriate level of quid pro quo.

While there are trade-offs to explaining how the applied AI-based tools develop AI-generated output, I argue for: (1) a range of incentive options for enhanced AI patent disclosure, and (2) establishing a data deposit requirement as an alternative disclosure. My article’s theoretical contributions define a framework for subsequent empirical verification of whether an inventor will opt for trade secrecy or patent protection when there is use of AI-based tools in the inventive process, and if so, for which aspects of the invention.

There are a plethora of issues that the patent system and the USPTO should consider as inventors continue to use AI, and consideration should be given to disclosure as AI technology develops and is used even more in the inventive process.