At last July’s joint UK IPO and WIPO Conference on artificial intelligence and intellectual property (AI: decoding IP), one of the more lively sessions was on the topic of ownership of IP that may have been created by AI. The discussions largely centred around the fact that an AI is not a “natural person” and does not have a legal personality that enables it to have rights of any sort, including the right to own property. The session also covered the possible consequences of giving AI a legal personality. For example, if you are in an accident with a self-driving car and the AI controlling the car has a legal personality, would you have to sue the AI for negligence?
Shortly after the conference, the team behind the “Artificial Inventor Project” announced that they had filed patent applications in several jurisdictions for AI-generated inventions, which listed “DABUS” as an inventor. DABUS is a Device for the Autonomous Bootstrapping of Unified Sentience, i.e. an AI-based system used to develop and identify new ideas using information from some existing knowledge base. The applicant for each patent application was the AI’s owner (Mr Stephen L. Thaler). Members of the Project state they do not believe AI could own a patent (in the same way that AI cannot own any other type of property), but they argue that AI should be listed as an inventor when the AI is “functionally inventing” because this allows AI-generated inventions to be patented, provides the same advantages as patenting human-generated inventions (such as promoting disclosure of information that could stimulate further innovation), and prevents humans from taking credit for work they have not down (which could devalue human inventorship).
However, one by one, major patent offices are rejecting these patent applications on the basis that their law requires inventors to be a “natural person”. In this article, we summarise the rationale behind the rejections, and consider whether how we have traditionally defined inventions and inventiveness needs to be updated for the current technological era.
The inventions
Thaler has filed two patent applications in a number of jurisdictions, for two quite different inventions that he states were invented by DABUS.
The first invention is a food container suitable for both liquid and solid food products. The container has a container wall that overcomes some of the problems with known packaging products. For example, the container wall has a profile that enables multiple containers to be coupled and held together without requiring a sleeve, ring or yoke.
The second invention is for devices and methods for attracting enhanced attention. The device may produce a pulse train to an LED or lamp at a frequency that is highly noticeable to humans. A light source driven in this way may serve as an emergency beacon in environments containing many flickering light sources.
On the face of it, both inventions seem to relate to patentable subject matter, which would be searched and examined by Patent Offices in the normal way.
Rejection by the EPO
Thaler filed the patent applications at the EPO for the two ideas in October and November 2018 (see EP18275163.6 and EP18275174.3). The required Designation of Invention form on each case was filed listing DABUS as the sole inventor together with an explanation of why DABUS should be named as the inventor. The EPO issued a summons to attend oral proceedings to discuss both cases together, on the basis that the Designation of Inventor forms did not meet the requirements laid down in Art. 81 EPC and Rule 19 EPC, i.e. that the forms neither indicate how Thaler has the right to the patent, nor indicate the family name or given name of the inventor.
The oral proceedings were held in November 2019 and the EPO’s decision was published in January 2020. Both patent applications were refused by the EPO on the grounds that the EPC requires an inventor designated in a patent application to be a human being. The EPO stated that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The EPO also noted that it is internationally accepted that the term “inventor” refers to a natural person. Furthermore, inventors are required to be named/designated on a patent application so that they can benefit from rights linked to this status, but such rights can only be exercised by an inventor having a legal personality. The EPO stated that merely giving a name (e.g. DABUS) to a machine is not sufficient to satisfy the requirements of the EPC.
Both decisions are being appealed.
The UK IPO’s viewpoint
Both applications were also filed at the UK IPO in the name of Thaler, without naming a human inventor (GB1816909.4 & GB1818161.0). The required Statement of Inventorship forms were filed listing DABUS as the sole inventor. The UK IPO informed the applicant that the naming of a machine as an inventor does not meet the requirements of the UK Patents Act. At a UK IPO hearing in December 2019 to discuss this issue, the Hearing Officer considered (i) whether a non-human inventor can be regarded an inventor under the UK Patents Act, and (ii) how the rights to the grant of a patent could have transferred to the applicant (Thaler) in this case.
Sections 7 and 13 of the UK Patents Act, together with Rule 10 of the Patent Rules, specify who is entitled to a patent for an invention and who shall be mentioned on a patent or published application. Section 7(3) of the Act explicitly defines the inventor to be “the actual devisor of the invention”. Accordingly, the applicant argued that when a person has not devised the invention, the applicant should not be penalised for giving an honest answer to the question of who devised the invention.
With respect to point (i), the UK IPO Hearing Officer reached a very similar conclusion to that of the EPO, for similar reasons, i.e. that UK law requires a human to be an inventor. With respect to point (ii), the UK IPO Hearing Officer concluded that because the machine cannot currently own property or have any independent rights, the machine neither had any rights to the invention nor could assign any rights to apply for a patent to the applicant (Thaler). Even if DABUS could be considered to be an inventor, the Hearing Officer could not see how DABUS could possibly transfer rights and ownership of the invention to the applicant.
The applicant has appealed the decisions, and the matter will now be dealt with by the UK courts.
Another blow from the USPTO
A US patent application for the devices and methods for attracting enhanced attention (US16/524,350) was filed in July 2019 and names Thaler as the applicant and assignee, and DABUS as the sole inventor. The USPTO issued a Notice to File Missing Parts on the basis that the application data sheet did not identify the inventor by his or her legal name. In the US, 35 USC 100(f) provides that an inventor is “the individual … who invented or discovered the subject matter of the invention”, and 35 USC 115(a) requires that a patent application includes the name of the inventor for the invention claimed in the application, and that each inventor executes an oath or declaration in connection with the application. The USPTO’s Commissioner for Patents recently issued a final decision on who can be named as inventor on this case, which echoes the findings of the EPO and UK IPO. The USPTO decision states that interpreting “inventor” broadly enough to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals.
Time to reboot how we think about inventorship?
The Patent Offices have focussed on whether machines can have rights, such as the right to file a patent application, and whether these rights can be assigned to an individual or company having legal personality. The Artificial Inventor Project has already said that they are not claiming that DABUS should own the patent or have any rights, but merely that it should be acknowledged as the inventor. Is it therefore, time to think about how we define an invention and an inventor?
Consider a first case in which a human, or a team of humans, have identified a problem that needs to be solved and avenues that could lead to a solution. To help them explore all the avenues quickly and identify a solution, they may develop and use an AI. The AI may be given a specific input or may be trained to look for particular features in order to identify a solution. In the UK, determining who the inventor is requires first identifying the inventive concept, and then who devised that concept. In this first case, the human(s) may be considered the inventor(s) of the eventual solution, because the AI is merely being used as a tool to speed-up human innovation.
Consider a second case in which a human decides they want to invent a lot of new ‘stuff’. For example, a CEO of a high-value company who is looking for the ‘next big thing’ could give their employees all the resources they need to invent new ‘stuff’, but doesn’t specify any restrictions on what the ‘stuff’ can be. Groups of employees in different technical fields may join forces to brainstorm ideas for new stuff. Some employees could realise that identifying what needs inventing is a big problem in its own right, and that they need to determine a solution to this problem. Their solution is to design an AI to look for new ‘stuff’ for them. The AI has a broader remit than in the first case above – it is not being used to look for a specific solution to a specific problem, but it is being asked to start by finding problems that need solving, and also possible solutions to these problems. Once the AI is up and running, it may combine information from different technical fields to come up with the problems and the new ‘stuff’ that solves these problems, similar to how the groups of employees generate ideas via their brainstorming. If the new ‘stuff’ generated by the employees is considered to be inventive, is the new ‘stuff’ generated by the AI also considered inventive? Does it actually matter how an invention is devised? Does it matter whether it took one person 10 years to arrive at an invention or an AI 10 hours to arrive at the same invention, and why do we value the person’s efforts but not the AI’s?
The Turing test is a test of a machine’s ability to exhibit intelligent behaviour equivalent to, or indistinguishable from, that of a human. It asks whether a human being can tell the difference between replies to questions put to both a machine and another human being. It is unlikely that any patent attorney viewing the two DABUS-generated inventions would have even considered that they were not devised by a human. It seems therefore, that creation machines like DABUS are outputting content that a human could have generated, given enough time and resources. Therefore, should we start crediting AI for their inventive output too, or perhaps change how we determine whether human inventions are inventive?
