Putting the Person in PHOSITA: The Human’s Obvious Role in the Artificial Intelligence Era

Advances in artificial intelligence (AI) have enabled the technology to contribute significantly to the development of patentable inventions. These advances, which allow AI to augment inventors’ problem solving capabilities, or perhaps even create inventions autonomously, have raised concerns regarding whether existing patent laws can adequately address the increasing role that AI plays in developing inventions. This tension comes to a head with patent law’s obviousness doctrine, which addresses the critical question: What constitutes a patentable invention? Is human ingenuity the sole province of patent worthy invention? Should patentability be negated to the extent that AI contributes to a claimed invention? Current obviousness analysis allows patents on inventions created with AI assistance, requiring only that an invention appear nonobvious to a person of ordinary skill in the art (PHOSITA). Although agreeing with this result in theory, some commentators argue that existing doctrine fails to account for the increasing role that AI plays in the process. Under the current doctrinal paradigm, if courts and the U.S. Patent and Trademark Office fail to account for AI’s role in the inventive process, this could result in too low of an obviousness standard, as they would not endow the PHOSITA with AI capabilities even when this technology is commonly used within a field. If the PHOSITA does not possess the capabilities indicative of the average skilled person in the art, then arguably patents will issue for undeserving inventions. This Note addresses these issues and argues that, despite some commentators’ concerns, the current obviousness test is appropriately structured to accommodate AI’s increasing role in developing inventions. Further, it challenges recent proposals intended to address perceived deficiencies in the obviousness doctrine.