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Artificial Intelligence Inventions & Patent Disclosure

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Artificial Intelligence Inventions & Patent Disclosure

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosureollow this and additional works at: https://scholarlycommons.law.cvzsl.edu/fsỜ Part of the Computer Lav.' Commons, Intellectual Property Law Commons,

and the Science andTechnology Law CommonsArtificial Intelligence Inventions & Patent DisclosureTabrez Y. Ebrahim*ABSTRACTArtificial intelligence (“Al” Artificial Intelligence Inventions & Patent Disclosure

) has attracted significant attention and has imposed challenges for society. Yet surprisingly, scholars have paid little attention to the impediments

Artificial Intelligence Inventions & Patent Disclosure

Al imposes on patent law's disclosure• Associate Professor of Law, California Western School of Law; Visiting Associate Professor, University of Cali

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosure Technology Center; Thomas Edison Innovation Fellow & Leonardo da Vinci Fellow, George Mason University Antonin Scalia Law School; Visiting Scholar, U

niversity of California, Los Angeles School of Law; Registered U.S. patent attorney; J.D., Northwestern University Pritzker School of Law; M B.A.. Nor Artificial Intelligence Inventions & Patent Disclosure

thwestern University Kellogg School of Management; LL.M., University of Houston Law Center, Graduate Entrepreneurship Certificate. Stanford Graduate S

Artificial Intelligence Inventions & Patent Disclosure

chool of Business. M.S. Mechanical Engineering. Stanford University School of Engineering. B.s. Mechanical Engineering. University of Texas at Austin

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosure Barton. Robert A. Bohrer. Shawn Miller. Lisa Ramsey. Anjanene Raymond. Daniel R. Cahoy. Sonia Katyal. Tejas Narechania. Jonathan Barnett. Eric Claeys

. Jolin Duffy. Sean O'Connor. Ashish Bharadwaj. Loletta Dardin. Charles Delmotte. H. Tomas Gomez-Arostegui. Taorui Guan. Devlin Hartline. Christa Lase Artificial Intelligence Inventions & Patent Disclosure

r, Daryl Lim. Kevin Madigan. Talka Syed. James Stem. Seth c. Oianburg. Agnieszka McPeak, Gregory Day, Nicole lannarone, Emily Loza de Silcs. Eric C. C

Artificial Intelligence Inventions & Patent Disclosure

haffee. Robert F. Kravetz, Ashley London. Aman Gebru. Elizabeth I Winston. A. Michael Froomkin. Mason Marks. Larry DiMatteo. Robert w. Emerson. Robert

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosureyler Smith. Brian Haney. Jthwang Yeo. Sikander Khan. Erica Pascal. Ryan Hsu, Kevin R. Tamm, and Daniel R, Peterson.Thanks to the following forums for

presenting this Article and their participants for insightful comments: 2020 Huber Hurst Research Seminar at University of Florida Warrington College Artificial Intelligence Inventions & Patent Disclosure

of Business. The Junior “FutuieLaw Workshop 4.0 at Duquesne University School of Law. Ostrom Workshop's Colloquium Series at Indiana University I Bloo

Artificial Intelligence Inventions & Patent Disclosure

mington). Junior Intellectual Property Scholars Association 1JIPSA1 at George Washington University School of Law, We Robot 2019 at University of Miam

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosurey of San Diego School of Law. Thanks to the Academy of Legal Studies in Business (ALSB) Interdisciplinary Section for selecting this Article for its i

naugural "Best Paper Award" at the 2020 ALSB Annual Conference and to ALSB members tor thoughtful comments147148PENN state Law Review[Vol. 125:1functi Artificial Intelligence Inventions & Patent Disclosure

on from the lenses of theory and policy. Patents are conditioned on inventors describing their inventions, but the inner workings and the use of Al hl

Artificial Intelligence Inventions & Patent Disclosure

the inventive process are not properly understood or are largely unknown rhe lack of transparency of the parameters of the Al inventive process or th

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosurecular result of the invention process, in contrast, this Article suggests that AĨ presents a lack of transparency and dillicully in replication that p

rofoundly and fundamentally challenge disclosure theory in patent law. A reasonable onlooker or a patent examiner may find It difficult to explain the Artificial Intelligence Inventions & Patent Disclosure

inner workings of Al. Bur even more pressing is a non-detection problem an overall lack of disclosure of unidentified AT inventions, or knowing wheth

Artificial Intelligence Inventions & Patent Disclosure

er the particular end state was produced by the use of Al.The complexities of AT require enhancing the disclosure requirement since the peculiar chara

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosure enhanced Al patent disclosure requirement mitigates concerns surrounding the explainabihty of Al-based tools and the inherent inscrutability of AI-ge

nerated output. Such emphasis of patent disclosure for Al may steer some inventors toward trade secrecy and push others to seek patent protection agai Artificial Intelligence Inventions & Patent Disclosure

nst would-be patent infringers despite added er ante costs and efforts. Utilitarian and Lockean theories suggest justifications for enhanced Al patent

Artificial Intelligence Inventions & Patent Disclosure

disclosure while recognizing some objections. Turning to the prescriptive, this Article proposes and assesses, as means for achieving enhanced disclo

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosurel study to verify its theoretical underpinnings.Table of ContentsIXTRODt.T.TTON.................................................... 149I.Foundations:

How & Why Al Is “Artihcial”.......................165A.Hie “Magic” of Al.......................................165B.I ransparency viewed from a Taxono Artificial Intelligence Inventions & Patent Disclosure

my of Al..............171n Theories & Normative ASSESSMENT s OfPatent Disclosure wtthAI....................................181A.I henries of 11k* Pate

Artificial Intelligence Inventions & Patent Disclosure

nt and I rade SecretTrade-off Decision with Al..............................182B.Theories of Patent Disclosure...........................1871.Theories

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

Artificial Intelligence Inventions & Patent Disclosure..............190

California Western School of LawCWSL Scholarly CommonsFaculty Scholarship2020Artificial Intelligence Inventions & Patent DisclosureTabrez Y. EbrahimFo

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