“The ‘obvious’ answer is not always the right one—intellectual property laws are complex, especially in relation to extraterrestrials.”
The 56th anniversary of the first broadcast of Star Trek just passed on September 8. I recently moderated a panel discussion at the Star Trek convention in Las Vegas, titled “Patents in the Future,” where I asked one of my favorite patent questions, one that most patent attorneys get wrong. If I find an alien invention and figure out how it works, can I patent it? I usually get the impatient answer “no” because I didn’t invent it—isn’t that obvious? But actually that’s not correct. I can get a patent.
A Country Only Has Jurisdiction Over its Own Citizens
The first thing to understand is that any country only has jurisdiction over its own citizens, and so U.S. patent law, for example, only applies to an inventor who is a U.S. citizen. We forget this because these days most countries recognize IP rights worldwide. This is only the case, however, because of IP treaties like the Patent Cooperation Treaty (PCT), the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS), the Berne Convention, and in this example, the Paris Convention for the Protection of Industrial Property of 1883. This treaty established the “right of priority,” such that an early invention in one country is considered prior art to an invention in another country. And even then, the treaty only applies among the countries that have signed the treaty, of which there are currently 179.
Pirated Technology was Historically Patented
Since the Patent Act of 1793, the United States granted patents to many Americans who had pirated technology from other countries while also barring foreign inventors from getting U.S. patents. In fact, that’s what many early American inventors did, including Francis Cabot Lowell who “invented” the Power Loom, the design of which was taken from England’s Edmund Cartwright’s power loom as a result of espionage during the War of 1812. Famed inventor Samuel Slater sailed around the world in 1789, presenting himself as a simple farmhand. He then memorized the workings of inventions he came across, including Richard Arkwright’s patented spinning frames, then filed a U.S. patent for the first water-powered textile mill, becoming very wealthy. President Andrew Jackson dubbed him the “Father of American Manufactures.” The English dubbed him “Slater the Traitor.”
Modern Examples of Questionable Patents
There are even easier ways of obtaining patents on space alien technology. Australia, China, and Serbia, for example, have what are called “petty patents” that are issued without being examined. The idea is that the patent can be granted quickly, but no one has any idea whether the patent is valid. That requires a separate examination process that is typically initiated only in the case of litigation. So in some countries, a human can easily and quickly get a patent on a Klingon mind sifter.
These days, Russia is refusing to recognize intellectual property rights from the United States and other countries sanctioning it for its war in Ukraine, so it’s likely that a human could get a Russian patent on a Romulan cloaking device. At least assuming that the Romulans also disapprove of the war in Ukraine.
And from a practical viewpoint, the United States and other countries on Earth have a first-to-file patent system, though technically the United States has a first-inventor-to-file system. The patent can be invalidated if someone shows that it was actually invented by someone other than the patent filer over a year before the filing. But in practice, who could prove that a Vulcan produced a mnemonic memory circuit more than one year prior? Would that be an Earth year or Vulcan year? And would a Vulcan even be allowed to testify in court to that effect? And that’s assuming it could speak English, or a universal translator could be found. And patented.
IP Laws Don’t Recognize Non-Humans
Further, given today’s intellectual property laws, it’s not likely that an extraterrestrial would be recognized as an inventor. In every country where the issue has arisen, only humans are eligible for IP protection. A monkey recently applied for a copyright registration for a selfie, but U.S. courts denied it. And an artificial intelligence machine (AI) applied for a patent in various countries, but was eventually denied in the United States, the United Kingdom, and Europe. Bad news for Data (the AI synthetic life form). So the precedent goes strongly against a Gorn getting a patent on a diamond projectile weapon, leaving the door open for a human to patent the invention.
In conclusion, the “obvious” answer is not always the right one, intellectual property laws are complex, especially in relation to extraterrestrials, and I fulfilled my childhood dream of speaking at a Star Trek convention. I even had some groupies!
Image Source: Deposit Photos
Join the Discussion
22 comments so far.
concernedSeptember 20, 2022 12:25 pm
“The patent laws, and there goals, are about the product of innovation, not whatever we think the right process is at the time.”
One would think as Mr. Quinn commented on my first IPWatchdog article. Far from the truth.
In Re: Killian. The claims only solved a problem of 58 years, since the date of the program’s inception.
Mental steps, plus routine, conventional and well understood (no evidence offered by those who said so).
Explain if the process is just mental steps, why did it take 58 years to solve the problem and escape at least a million working professionals and experts, and all of those one million had mental capabilities?
Patent case law is from outer space, not the inventions.
KAASeptember 19, 2022 08:51 pm
Sorry one more..
@Dave, the MPEP states: “Laws of nature and natural phenomena, as identified by the courts, include naturally occurring principles/relations and nature-based products that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature.”
An alien invention would obviously have “markedly different characteristics compared to what occurs in nature.”
And that’s the thing. There’s no “mens rea” required for inventorship. There’s no predefined process or state of mind that a human must go through to properly conceive of an invention. The patent laws, and there goals, are about the product of innovation, not whatever we think the right process is at the time.
KAASeptember 19, 2022 08:38 pm
@S. in Pa. wouldn’t it depend on if the alien invention was “otherwise available to the public”
Klingon Advocate AllianceSeptember 19, 2022 07:45 pm
@Howard, I respect your opinion that my points about AI and/or unintended chemical discovery are different than the hypothetical. But I think we have differing opinions as to what it means to “originate” patentable features.
My point is that the first human being(s) wins. The whole “reverse engineering” rhetoric in patent law is based on reverse engineering something another human built. But it has nothing to do with the goals of the patent laws in this context.
I’ve enjoyed this discussion and I expect there will be further developments on this area of law in the coming decade. Until then, I’m happy to respect your decision to #endrant.
HowardSeptember 19, 2022 07:26 pm
KAA- I think I understand the point you are trying to make but you seem confused about the hypothetical and the point I am making. Also, your hypotheticals raise other legal issues that add to the confusion. I am happy to pursue this further but I do not want to waste everyone’s time. I am not sure how we can connect off of this forum.
However, to try to get clear, I am dealing with the hypothetical in the article where you said you thought it might be possible for reverse engineering (in this case by the human) to qualify as conception.
My point is that it cannot qualify as conception where you did not originate any patentable feature of the invention. That is, you simply copied an invention by someone else, here, an alien. Granted, it is unclear whether that alien can qualify as an inventor under the statute, as so, perhaps he cannot patent it. That does not mean that, therefore, the invention is somehow free for others to copy or reverse engineer and then claim as their own conception of an invention.
This is my last post on this. Do not want to belabor this with side issues.
Klingon Advocate AllianceSeptember 19, 2022 06:54 pm
@Howard, I may be misinterpreting what the USPTO would consider to be conception. But it’s not as clear-cut as your making it, because an alien is not a “someone.” And I think a lot of people are missing the point focusing on what the patent law appears to be, rather than pondering what it intends to accomplish.
Think about it this way. Say that the “alien” is a machine-learning module that you programmed to do unsupervised training into some scientific area (e.g., drug discovery). Say that the machine-learning module determines a result for a drug that you realize is patentable, but were never intending to find. Nevertheless, that result was not made by man, nor by nature.
The USPTO may ultimately deem this process to not be conception. But point me to a specific portion of text in the patent laws or the MPEP that clearly resolves the issue.
I don’t do work in the chemical arts, but to put it another way, what if an unexpected reaction occurs when an inventor performs a chemical reaction, and it results in patentable subject matter. How is the discovery of the result of the reaction any different than either of the previous two examples?
Night WriterSeptember 19, 2022 06:00 pm
>>Then you read the article and find out that the self-proclaimed expert misses the entire issue.
Yes this is right.
Also, the movie that is most interesting for this issue would be “The Man Who Fell to Earth.”
HowardSeptember 19, 2022 02:12 pm
Klingon advocate alliance – I do not think reverse engineering what someone else invented could ever qualify as invention under U.S. law. I think you are misreading what conception is.
DaveSeptember 19, 2022 08:18 am
I’m a bit dismayed that IP Watchdog would publish this nonsense.
A non-attorney trying to school professionals on a hypothetical. Then you read the article and find out that the self-proclaimed expert misses the entire issue.
Everyone recognizes that the alien can’t obtain the patent. That is not the question. The question is whether a person can patent something that they found in nature. Go ahead and check the law on that one. Straightforward question and a Straightforward answer.
I think Gene may want to think twice about having content on his website that recommends fraud on the USPTO.
S. in Pa.September 18, 2022 09:14 pm
Also, about the cloaking device: any Romulan’s declaration of inventorship is likely to be disputed in the Russian courts. Pavel Chekov would swear that it was invented in Russia.
S. in Pa.September 18, 2022 08:45 pm
Wrong answer, but a solid demonstration that the author knows his TOS canon. (I’ll give Bob the benefit of the doubt about calling a Vulcan “it,” because that’s a non-legal error that’s so fundamental it could only have been introduced by an editor. Presumably one who has never watched Star Trek.)
Why is the article’s answer — which I read as a qualified “yes” — wrong? Because the cited examples of alien inventions would be straightforward foreign prior art, in public use outside the United States for over 50 years now. There’s no upper stratospheric boundary to “outside the United States.” Vulcan, Q’onos, Cestus III, and Romulus are merely foreign jurisdictions.
The answer to the question in the headline is wrong, but to give Bob credit where it’s due, I think the headline asked the wrong question. When the article instead addresses the question “Can a Space Alien (or Other Non-Human) Obtain a U.S. Patent on His/Her/Its Own Invention?”, I’d say that Bob is clearly correct that the likely answer would be “no,” under current law.
Jorge L. ContrerasSeptember 18, 2022 08:38 pm
FYI, Australia discontinued its “petty patent” system last year.
Klingon Advocate AllianceSeptember 18, 2022 01:11 pm
@Anon, I don’t disagree with your sentiment that “recogniz[ing] an invention made by a non-human, does NOT permit you to claim that you invented the item.”
But it doesn’t seem like an entirely clear cut issue. There’s two ways that I’ve thought about conception based on the MPEP: (i) the inventive moment – where an inventor conceives of a new idea, and (ii) something akin to “mental possession” of the tools of enablement.
Note for example this line from the MPEP: Conception has also been defined as a disclosure of an invention which enables one skilled in the art to reduce the invention to a practical form without “exercise of the inventive faculty.”
Under this interpretation of conception, it doesn’t seem like a clear cut issue that reverse-engineering an alien invention would be insufficient for conception. As AI becomes more sophisticated, I predict we will become more familiar with this debate.
HowardSeptember 18, 2022 09:49 am
Because this is tongue and cheek by a layperson, I do not take the analysis and legal conclusion to seriously. The history is apparently to lend support to the conclusion, but, of course, while quite interesting, the PRIOR law has changed over the 200 plus years since the initial patent statute was originally passed by Congress.
Thus, under modern law, the answer is clearly that you could not patent the alien invention unless you perhaps modified it in some way to add additional patentable subject matter, and as pointed out in a prior comment, you would need to make appropriate disclosures to the PTO, as well. That is, I, in general, agree with the prior anonymous post.
IncredulousSeptember 18, 2022 08:45 am
“U.S. patent law, for example, only applies to an inventor who is a U.S. citizen”
This is a stunning misrepresentation. Foreign inventors can and do obtain patents in the US *all the time*. U.S. patent law applies to any inventor from any country who seeks to obtain and practice a patent in the U.S.
RonSeptember 18, 2022 08:15 am
Yes, you can get a patent, but it won’t hold up in court.
AneeSeptember 18, 2022 07:52 am
First inventor to file, yo
concernedSeptember 18, 2022 07:08 am
Answer: Hard No.
When I was told my process is routine, well understood and conventional, yet the evidence, plus no s103 rejection, show nobody on this EARTH apparently does any part of my process, the USPTO must have of been talking about aliens from another planet that do my process routinely, conventionally and understand it well.
Aside: The CAFC is already using my precedential case to nail inventors. No mention of “mental steps” in this opinion:
“Our court has held that claims that “are directed to collection of information, comprehending the meaning of that
collected information, and indication of the results, all on a
generic computer network operating in its normal, expected manner” are claims to abstract ideas”
However, abstract ideas are patentable per Alice if the process is new and useful, a part of the Alice decision conveniently overlooked.
Question: An inventor collects information about people who eat peanut butter and jelly sandwiches and that process, with concrete steps, leads to solving a horrible disease. Patentable? Insignificant post solution activity? Or are we more concerned with the way a problem is solved instead of its solution?
I think patent case law is from another planet. The author of this article is asking the wrong question.
Pro SaySeptember 17, 2022 07:19 pm
“Can a Human Patent a Space Alien’s Invention?”
Not unless you’re willing to risk being vaporized.
AnonSeptember 17, 2022 05:20 pm
No Bob, just because you as a human recognize an invention made by a non-human, this does NOT permit you to claim that you invented the item.
Quite in fact, this is fraud on the Office, and I could not stress strongly enough against the action that you advocate.
Any attorney that would assist you — having heard your admission — would face disbarment.
mikeSeptember 17, 2022 02:31 pm
Alien = Law of nature. So, no. No patent. Abrogate Alice and I might change my mind.
E.T.September 17, 2022 02:30 pm
Didnt know that the ‘right of priority’ means ‘that an early invention in one country is considered prior art to an invention in another country.’
Thanks for this novel view of the Paris Convention!