Creating a brighter being: can AI be a registered inventor of a patent?


09 May 2022

With AI technology being adopted cross-sector to assist in carrying out tasks, problem solving and to develop new and potentially significant technologies/processes across the world the presence of AI in our lives will, inevitably, increase.

It is anticipated that, after combining a huge amount of data with algorithms, AI will go on to automatically learn from characteristics and patterns within the data, but what happens when AI creates something that capable of intellectual property protection?

In the summer of 2021, the South African Patent Office granted a patent application created by an AI system, Device for Autonomous Bootstrapping of Unified Sentience (DABUS), listing DABUS as the inventor. This is the first-ever patent granted to an AI system and has caused international controversy. Why? Because DABUS is not a 'person' capable of being the inventor or owner of a patent in numerous jurisdictions.

Stephen Thaler, who created DABUS, filed a patent application in 17 jurisdictions including the US, Europe and UK in 2018 citing himself as the assignee and who would hold the IPR if granted. The patent application is in relation to a “food container and devices and methods for attracting enhanced attention”. The subject matter if the patent is arguably less interesting than the application for the patent itself.

A number of jurisdictions have rejected DABUS as being capable of being the inventor and owner of the patent application. Until South Africa’s grant, there was almost universal agreement that the application should be rejected.

In December 2019, the UK IPO rejected Mr Thaler’s patent application and arguments advanced that 'person' for the purposes of the meaning of inventor under the Patents Act 1977 is not limited to humans. Mr Jones, acting for the comptroller, determined that:

there is a clear expectation that the inventor and person…are one and the same, namely a natural person – a human and not an AI machine. There has never been any indication from the courts that is an incorrect interpretation and it is settled law that an inventor cannot be a corporate body. Even though the invention itself is said to have been created by DABUS, [Mr Thaler] acknowledges that DABUS is an AI machine and not a human, so cannot be taken to be a “person” as required by the Act[p.18].

In September 2021, the Court of Appeal ruled by majority that the IPO was correct in refusing Mr Thaler’s patent application, concluding that DABUS was not a person.

The judgment reaffirms the UK IPO ruling but Lord Justice Birss went further and commented that “[Mr Jones’] decision does not really concede that DABUS is the actual deviser. What is accepted…is that DABUS created the invention” [53], available here). Lord Justice Birss (although dissenting) goes further to say that:

[m]achines are not persons. The fact that machines can now create inventions, which is what Dr Thaler says happened in this case, would not mean that machines are inventors within the meaning of the Act. Assuming the machine is the entity which actually created these inventions, it has no right to be mentioned as the inventor.” [55]. 

Despite the making of these comments, Lord Justice Birss found in favour of allowing the appeal, but Lord Justice Arnold and Lady Justice Laing found in majority that it should be rejected. The justices all concluded, however, that “…the clear effect of the relevant provisions of the 1977 [Patent] Act is that an inventor must be a person” [102].

The UK position corresponds with the preliminary opinion issued by the European Patent Office (EPO) Legal Board of Appeal in June 2021 which indicated that an inventor, for the purposes of a patent application, must be a person with legal capacity. This is not a title or status which AI systems can enjoy in consideration of Articles 60 and 62 of the European Patent Convention. It is important to remember that this distinction will not apply to inventions whereby a human uses, for verification or for problem-solving purposes, AI.

The EPO Legal Board of Appeal formally announced dismissal of Mr Thaler’s appeal on 21 December 2021, refusing the application citing DABUS as inventor, and confirming orally that under the EPC “the inventor had to be a person with legal capacity”. The United States Patent and Trademark Office has taken a similar stance.

So why has South Africa gone against the global tide and granted the patent, recognising DABUS as the inventor? The very short answer is, South Africa does not examine patent applications for patentability before grant. As long as the formal filing requirements are met, an application is likely to get through. This may not, however, be the end of the story for the South African patent and we may be treated to a sequel if the patent is challenged by a third party.

Proceedings are ongoing in Australia after its Federal Court ordered IP Australia to reconsider Mr Thaler’s application. IP Australia announced shortly after, in August, that it would appeal the Federal Court’s decision.

Although there has been a resounding rejection of the application in the UK and at the EPO, a common theme has emerged from the judgments made at various stages: these decisions are decided under the current applicable legislation. The Court of Appeal acknowledged that the 1977 Act did not foresee AI systems being able to invent of their own volition, or perhaps even their existence. Similar sentiments have been expressed in the EPO and USPTO decisions.

Shortly after the Court of Appeal decision, the UK IPO launched an open consultation on artificial intelligence and IP. The consultation specifically seeks to understand patent protection for AI-devised inventions and whether they should attract protection. The UK IPO (and to some extent the UK government) appears to acknowledge that the current system of patent protection is either not fit, or, not capable of considering AI inventions and creations, but that any future system should continue to promote human creativity. The UKIPO is currently analysing the feedback but the timeline for the outcome is not known.

What is inevitable is that AI creations will only increase in number, and therefore it is positive that intellectual property offices around the world are considering this issue – as to whether that results in a significant shift in approach, that remains to be seen.

The content of this article is for general information only. It is not, and should not be taken as, legal advice. If you require any further information in relation to this article please contact the author in the first instance. Law covered as at May 2022.

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