Can an AI be an inventor of a patent? A series of patent applications around the world are asking that very question...
Computers, and the functionality they provide, permeate every part of modern life. Computers are on your desktop, computers are in your car and there’s a chance you’re reading this article on a device that’s talking to the watch on your wrist, the router in the other room and a variety of other smart devices in the building.
Computers and computing power are also part of the process of generating inventions and, for example, enable huge volumes of data to be analysed and processed at the press of a button. The increasing use of artificial intelligence and machine learning techniques also enables relationships within such data to be determined that would be beyond the abilities of a person or team analysing the data in more traditional ways to uncover.
In some cases it may be difficult to determine exactly where an invention has come from – is the claimed invention describing a relationship that was “determined” by the computer/AI? Is the AI the inventor or is the inventor the research team that designed and set up the conditions for the invention to be generated?
When filing a patent application, the above question is often resolved by naming the person or persons who are involved in the project as the inventor or inventors of the claimed invention.
Some people however contend that the AI might be the inventor.
One such person is Dr Stephen Thaler, President and CEO of Imagination Engines Inc, who invented a machine* known as DABUS (the “Device for Autonomous Bootstrapping of Unified Sentience”) which Thaler claims has generated inventions on its own. Thaler with assistance from Professor Ryan Abbott, Professor of Law and Health Sciences at the University of Surrey, has filed multiple patent applications in a range of jurisdictions around the world in order to test and challenge the accepted view that only a person can be an inventor.
A summary of the state of play of the various DABUS cases is provided below. For those interested the two inventions that DABUS allegedly generated can be seen in the UK applications – GB2574909 and GB2575131.
Starting alphabetically, we begin with a territory in which Thaler has had some success. While the Australian Patent Office said that the patent application did not conform to Australian Patent Regulations, the matter was appealed by Thaler to the Federal Court where Justice Beach decided that there was nothing within the provisions of the Australian Patents Act that excluded an inventor from being a non-human. This decision is to be appealed by IP Australia as noted in their August press release.
In Europe the two patent applications (EP3564144 and EP3563896) were refused by the EPO following oral proceedings in November 2019 on the grounds that the European Patent Convention requires an inventor to be a human.
The EPO’s decision is being appealed to the Board of Appeal (J0008/20 and J0009/21). In its preliminary opinions (here and here) the Board of Appeal indicated that in its view an inventor needs to a person having legal capacity. The oral proceedings for the appeal is scheduled for 21 December 2021**
Incidentally the Designation of Inventor statement on the EP DABUS cases is not your typical statement and is worth a read. It’s an essay in its own right!
The Thaler patent was granted in July 2021 by the South African IP Office. The differences between the patent system in South Africa compared to the other countries in this list should be noted however. South Africa doesn’t examine applications and the IP Office only checks formal requirements (i.e. as long as someone or something was indicated in the “inventor” box the patent application was going to proceed).
The UKIPO refused Thaler’s two patent applications (GB2574909 and GB2575131) on the grounds that the requirements of the UK Patents Act were not met. Thaler appealed to the High Court which confirmed that the provisions of the Patents Act were clear and the inventor needed to be a person. Mr Justice Smith did highlight however that the decision was based on the interpretation of UK legislation and did not speak to the wider policy discussion.
Thaler appealed the High Court decision to the Court of Appeal which, in a split decision, dismissed the appeal. The appeal case was heard by Arnold, Laing and Birss LJJ. The judges agreed that under UK Law an inventor needed to be a person but disagreed on whether Thaler had met the requirements of the Patent Act with Birss arguing that the applications should not be withdrawn simply because the statement under s13(2)(a) [the requirement to file a statement identifying the inventor] “does not identify the person who is the inventor”.
We understand that Thaler is seeking permission to appeal to the UK Supreme Court.
The USPTO refused the application on the grounds that the “inventor must be a natural person”. An appeal was brought in the Virginian Eastern District Court and the decision in which the court found that the USPTO’s interpretation of the Patent Act was found consistent with the language of the act and the associated caselaw. Thaler is now appealing the decision to the Court of Appeals for the Federal Circuit.
The Thaler cases still have some distance to run before final decisions are reached in the various territories that the patent applications have been filed in. Whether one views the applications and the associated appeals as something of a publicity stunt or a genuine challenge to the way the subject of inventorship is determined, they have had the effect of raising the profile of this issue.
*the patent application to the decidedly human inventor, Stephen Thaler, that describes the DABUS system can be found here.
**which is coincidentally the day before the new Matrix film is released in the UK for those of you that might want to compare and contrast the (desert of the) real world with the Hollywood view of AI!
16.12.2020Shakeel Ahmad explains the borderline of patentability.
What is and is not protectable?
25.01.20215 minutes with Alistair Gay: working at Keltie.
Alistair Gay, Partner at the firm who joined over twenty years ago, shares his thoughts on what makes Keltie special.