Artificial intelligence as inventor:in?
Patent applications are currently being filed with numerous patent offices worldwide for inventions that are said to have been made by an artificial intelligence (AI). With these proceedings, the applicants are specifically confronting the patent system with the fundamental question of how AI inventions should be handled in the future.
As part of a monitoring process, we provide a continuously updated overview of the various proceedings(as of August 11, 2022).
USA
In the USA, patent applicant Stephen Thaler stated in the patent application that the AI "DABUS" (Device for Autonomous Bootstrapping of Unified Sentience) developed by him had itself recognized the novelty of the invention and should be registered accordingly as inventor:in. This request was not met by the U.S. Patent and Trademark Office (USPTO) with reference to several sections of the 35th title of the U.S. Code (Patents) - in particular §§ 100 and 115 - as well as to the understanding of the "person" as a "human individual." [1] The concept of inventor or inventoress as defined by the United States Congress in 35 U.S.C. § 100 (f) as an "individual [...]" did not permit a different conclusion.
Thaler challenged this decision, arguing, among other things, that there was a lack of evidence that Congress intended to exclude AI-generated inventions from patentability. Federal Judge Leonie Brinkema of the Eastern District of Virginia ruled on September 2, 2021, that DABUS cannot be listed as an inventor:in a patent application, even from her perspective, and dismissed the AI researcher's lawsuit against the USPTO. Like the lower court and with reference to earlier decisions [2], it based its reasoning on the fact that the inventor must be understood as an "individual" within the meaning of 35 U.S.C. § 100 (f). Accordingly, the term should be understood to mean a "natural person." Moreover, the use in common parlance made it clear that an AI could not be described as an individual. Despite this unambiguous interpretation, she took up Thaler's legal policy argument that admitting the AI as an inventor:in could create incentives for innovation: Judge Brinkema doubted, however, that the prior art of the AI was already sufficient for it to be able to invent independently. In the event that this nevertheless occurred, intervention by the U.S. Congress would be necessary to clarify this fundamental issue. The requirements of international law were not addressed.
Thaler appealed this decision to the U.S. Court of Appeals for the Federal Circuit, which published its decision in the case on August 5, 2022. [3] Thaler argued in his appeal that the prior decision was "contrary to the plain language and purpose of the Patent Act," which is intended to promote innovation and does not require that an inventor be a natural person. District Judge Leonard Philip Stark again disagreed, stating that the term "individual" in the relevant part of the U.S. Patent Act (35 U.S.C. § 100(f)) means a natural person. Although the U.S. Patent Act does not define the term "individual," the Supreme Court construes it to mean a natural person unless Congress intended the term to have a different meaning. [4] However, there is no evidence for this. This view is further based on the usage of the term and the definition in the Oxford English Dictionary. Furthermore, the Patent Act - in contrast to other decrees - is not open to an extensive interpretation of the term inventor based on the "context" of the facts. [5] With these statements, the court followed the lower courts. Thaler further argued-referring to 35 U.S.C. § 103-that the grant of the patent should not be denied because of the manner in which the invention was made. However, the court did not follow this view either, especially since § 103 does not concern the (lack of) inventive step.Finally, the appellant's argument that South Africa had recognized DABUS as an inventor was also disregarded. This could not be considered, especially since the South African authorities had not applied US law. As a result, the decision of the district court was upheld and the appeal was dismissed.
[1] In re Application of Application No.: 16/524,350 [2020] USPTO (April 27, 2020).
[2] Beech Aircraft Corp. v. EDO Corp [1993], 990 F.2d 1237, 1248; Univ. of Utah v. Max Planck Society, 734 F.3d 1315, 1323 (Fed. Cir. 2013).
[3] Thaler v. Vidal, U.S. Court of Appeals for the Federal Circuit, No. 21-2347.
[4] Mohamad v. Palestinian Auth., 556 U.S. 499, 454 (2012).
[5] Bostock v. Clayton Cnty, 140 S. Ct. 1731, 1749 (2020).
European Union
In the EU patent applications, which had been revised several times in advance, Thaler stated, just as in the U.S. proceeding, that the inventions were made by AI. He argued that Rule 19(1) of the Implementing Regulations to the European Patent Convention (AO EPC) on the filing of inventor designations does not require that the inventor or inventors be human; it merely serves to identify them. Moreover, the substantive provisions in Art. 52-57 EPC are central, not the rules of the Implementing Regulations. The European Patent Office (EPO) disagreed, pointing out that under Rule 19(1) AO EPC and Art. 81 EPC, the designation must contain, inter alia, the first name, surname and address of the inventor. [1] Names of natural persons are not to be equated with designations of things, especially since the name includes a personal dimension. Although Rule 19(2) AO EPC provides that the correctness of the designation of the inventor is not examined by the EPO, the EPO could not avoid objecting to the designation of DABUS, especially since the inventor is notified of the registration by the EPO if someone else files the invention (Rule 19[3] AO EPC). Against this background, a discussion then developed on the question of how Thaler had acquired the rights to the invention. In a first application, Thaler had stated that he was entitled to the right due to his position as employer of the AI. This was rejected by the Patent Office with reference to Art. 81 and 60(1) EPC, since machines could neither be employed nor transfer rights.
Thaler defended himself against this decision with an appeal. In the course of the appeal proceedings, the President of the EPO, António Campinos, requested, based on Art. 18 of the Rules of Procedure of the Boards of Appeal of the EPO, that he then be allowed to comment on these proceedings of general interest. This request was granted [2] Campinos emphasized, on the one hand, that the inventor must be a natural person in order to ensure and protect the personal aspects of the invention as well as the economic significance of the patent. On the other hand, this is the only way to let the general public know who the inventor is. Campinos went on to say that AI systems remain tools of humans, even though they now have remarkable capabilities. The systems would not have an awareness of their self, nor would they have a personality or will of their own. The Board of Appeal then had to clarify the question of whether Art. 81 EPC and Rule 19 of the AO EPC are complied with if the applicants indicate as inventor:in someone who is not a natural person. In a preliminary assessment dated June 21, 2021 [3], the EPO Board of Appeal held that the inventor designated in the patent application must be a person having legal capacity. The decision of the EPO Board of Appeal in case J 8/20 was published on July 6, 2022. It confirms that under the EPC an inventor named in a patent application must be a person.
[1] EPO [2020], EP 18 275 163 & EP 18 275 174 (Jan. 27, 2020) (reasons for decision).
[2] See Comments by the President of the EPO, reference RJ/N35111-EP1 in Appeal No. J0009/20-3.1.01.
[3] Communication of the Board of Appeal pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal, reference RJ/N35111-EP1 in Appeal No. J0009/20-3.1.01.
United Kingdom
In the United Kingdom, Stephen Thaler also filed two patent applications. The UK Intellectual Property Office (UKIPO) advised him that a machine could not be registered as an inventor:in. Accordingly, Thaler had to explain how he had obtained the right (from the inventor:in). After no result was reached also in an oral hearing, the UKIPO finally rejected the application. [1] The wording of Sec. 7 and 13 of the Patent Act as well as Rule 10 of the Patent Rules were decisive. While Sec. 7(3) defines the term inventor ("In this Act 'inventor' in relation to an invention means the actual deviser of the invention"), Sec. 13 describes the right of the inventor to be named in the published patent application. If the applicant and inventor are not the same person, the applicant must explain from what he or she derives the right to the grant of a patent. Rule 10(3) and 10(4) set out the time period (16 months) for filing the necessary declarations. According to the UKIPO, the wording of the provisions is largely unambiguous, even though relevant legal cases continue to be lacking.
Thaler appealed this decision, which was followed by a judgment of the England & Wales High Court on September 21, 2020. [2] Unlike the Eastern District of Virginia in the USA, Judge Marcus Smith's decision did acknowledge that DABUS had made the invention. However, he stated that even if an AI was acknowledged as inventor:in, it was not possible to show the transfer of rights to this invention to Thaler.
After an appeal by Thaler and a hearing in the summer of 2021, the decision was substantially upheld by the Court of Appeal (Civil Division) of the Royal Court of Justice on September 21, 2021. [3] The judges pointed out with reference to Sec. 13, Subsec. 1 of the Patent Act that this implements Art. 4ter of the Paris Convention for the Protection of Intellectual Property of 1883 (Paris Convention). Accordingly, the inventors or co-inventors are granted a right, which is a personal right. Since only persons can have rights, it follows that inventors must be persons. An action before the Supreme Court seems likely in view of Thaler's strategy so far. However, it is unclear whether such an action would be accepted. At the same time, the UKIPO indicated that - inspired by the proceedings - some adjustments to the law could be made.
On June 28, 2022, the UKIPO published the outcome of a consultation process that began in the fall of 2021 and addresses (among other things) the protectability of AI inventions. [4] In it, the agency concludes that there are currently no pressing changes to the law regarding the inventorship of an AI. The majority of respondents to the consultation had expressed the view that AI was not yet sufficiently developed to be inventive without human intervention. At the current state of the art, AI is only an assistive tool, he said. They also said that the central role of intellectual property law in fostering human creativity should be maintained. Most respondents were also against a legal change, as such a change would have to be harmonized internationally and the UK should not dare to go it alone. In the consultation results, the UKIPO expresses concern that the proceedings initiated by Thaler could be misunderstood to mean that AI-generated inventions do not receive protection in the UK. This is not the case; only a natural person must be named as inventor.
[1] Stephen L Thaler [2020] UKIPO - BL O/741/19 (December 4, 2019).
[2] Thaler v Comptroller-General [2020] High Court of Justice - Business and Property Courts of England and Wales - Patents Court (ChD) Appeal No. CH-2019-000339 (September 21, 2020).
[3] Patent applications GB 1816909.4 & GB 1818161.0 [2021] EWCA Civ 1374 Case No: A3/2020/1851 (September 21, 2021).
[4] Artificial Intelligence and Intellectual Property: copyright and patents: Government response to consultation, Consultation outcome, Updated 28 June 2022.
Australia
These generally negative decisions are contrasted with a July 30, 2021 ruling from Australia. In Stephen Thaler v Commissioner of Patents, the Federal Court ruled that non-human inventors do not conflict with the concept of inventor in Australian law [1]. However, also in Australia, the Australian Deputy Commissioner of Patents had initially rejected the patent application [2] on the grounds that no human inventor had been indicated. In this respect, the Commissioner was of the opinion that something human was inherent in the concept of inventor: "...the human quality of ingenuity that resides in the notion of invention". This ingenuity would not be present in an AI system that performs computations."[3]
Thaler also resisted this, arguing that the concept of inventor in the Australian Patent Act encompasses AI systems. Unlike the lower court, Justice Jonathan Beach of the Federal Court of Australia (FCA) concluded on July 30, 2021, that an AI could be an inventor:in [4]. In contrast, it remains undisputed that only natural persons or legal entities can be right holders [5]. The court's interpretation is not primarily based on the wording of the law, but rather on its purpose. In this context, single justice Justice Beach describes numerous benefits of the use of AI, including in pharmaceutical research. As a result, the lower court's decision was reversed and remanded to it for reconsideration. There is a discussion of international law to the extent that the decision refers to the Patent Cooperation Treaty (PCT).
On August 30, 2021, it was announced that the Australian Commissioner of Patents had appealed this decision to the Victoria Registry of the FCA on August 27, 2021. [6] On April 13, 2022, a panel of five judges of the FCA allowed this appeal [7]. The judges:in find that only a natural person can be an inventor:in terms of the Patents Act and Regulations. Ryan Abbott already announced an appeal to the High Court. However, successful applications for appeal to the High Court are relatively rare, especially since there must be a legal question of general importance or a matter of public interest.
[1] Thaler v Commissioner of Patents [2021] FCA 879 (July 30, 2021).
[2] AU2019363177.
[3] Stephen L. Thaler [2021] APO 5, Australian Patent Office (February 9, 2021).
[4] Thaler v Commissioner of Patents (fn. 15), para. 10 et seq.
[5] Thaler v Commissioner of Patents (fn. 15), para. 12.
[6] Australian Government, IP Australia, Commissioner's Update, August 30, 2021.
[7] Commissioner of Patents v Thaler [2022] FCAFC 62 (April 13, 2022).
South Africa
To date, the Companies and Intellectual Property Commission (CIPC) in South Africa is the only authority to have granted a patent in which the AI was registered as inventor:in. [1] The basis for this decision was an application under Sec. 25 et seq. of the South African Patent Act of 1978. However, the Patent Act does not define the term inventor. Rather, Sec. 27(1) states that "an inventor or any other person acquiring from him the right to apply" may apply for a patent. Sec. 30(1) then specifies the form of the patent application including a provisional or complete description, the payment of a fee and the proof of an address for service in South Africa. If the applicant is not an inventor, Sec. 30(4) requires proof of ownership or entitlement to file an application, but the Act does not contain any further details on the type of proof required. However, Regulation 22(1)(d) of the Patent Regulations states that the application must be filed by Form P1 and the possible assignment must be established by evidence satisfactory to the Registrar.[2] Apparently, however, the examination of patent applications in South Africa does not go so far as to address the inventorship of AI. [3] The formal examination seems to check only whether an inventor is named, but not who. The patent now granted is based on the PCT, with these applications being governed by the 43A-43F Patent Act.
[1] South African Patent Journal [2021] Vol. 54 / No. 7 (July 28, 2021), p. 255.
[2] On this and m.w.h. Chijioke Okorie Artificial Intelligence system as inventor in South African patent application: the case of DABUS.
[3] Daria Kim/Josef Drexl/Reto M. Hilty/Peter R. Slowinsky, Artificial Intelligence Systems as Inventors? A Position Statement of 7 September 2021 in view of the evolving case-law worldwide, Max Planck Institute for Innovation and Competition, September 7, 2021.
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