Can artificial intelligence be an inventor?

Today, artificial intelligence (AI) is omnipresent and is used for many applications. It plays a decisive role in many fields of activity, leading to specific legislation. The European Commission recently presented its proposal for a European Regulation laying down harmonised rules on artificial intelligence (Artificial Intelligence Act), emphasizing the need to regulate AI systems according to the risks that they pose (1).

In the field of intellectual property, the World Intellectual Property Organization (WIPO) Technology Trends 2019 – Artificial Intelligence report highlighted a significant increase in the number of patents filed in the field of AI over the last ten years.

More importantly, AI is becoming increasingly autonomous; it occupies a growing place in the fields of design and research and development and is likely to have a significant economic impact on innovation.

Protecting inventions made by artificial intelligence systems

The protection of inventions made by AI systems raises many questions, both within the European Union and abroad.

The WIPO, noting that the role of AI in the invention process is increasing, has drawn up a list of relevant questions raised by this technological revolution. The question of inventorship is at the top of the list:

  • –should the inventor, within the meaning of patent law, necessarily be a human being, or
  • –should it be possible for an AI application to be named as the inventor?

It is in this context that the Stephen Thaler, the President and CEO of Imagination Engines, Inc., has developed an AI system called “Device for the Autonomous Bootstrapping of Unified Sentience” (DABUS). This system is described as “a swarm of many disconnected neural nets, each containing interrelated memories, perhaps of a linguistic, visual, or auditory nature”.

DABUS has generated two inventions on its own:

  • –a plastic food container based on fractal geometry, and
  • –a flashing light (or “neural flame”) to alert emergencies.

In 2018, Stephen Thaler, together with a team of specialist lawyers gathered under the name Artificial Inventor Project filed several patent applications around the world.

Denial of AI inventorship in Europe

Stephen Thaler’s patent applications were initially refused by several intellectual property offices.

They were rejected by the European Patent Office (EPO) in January 2020. The EPO considered that the inventor could only be a natural person, because:

  • –(i) the information required by the European Patent Convention for the designation of the inventor: family name, given names, address;
  • –(ii) the need for the inventor to have a legal personality enabling them to exercise the rights deriving from it.

The solution given by the EPO appears to be consistent with the current position of the European Parliament. In its Resolution of 20 October 2020 on intellectual property rights for the development of artificial intelligence technologies, it first recalls that while AI is based on algorithms that are not patentable as such, these mathematical methods may be protected by patents when they are used as part of an AI system that contributes to producing a further technical effect.

However, the European Parliament “[p]oints out the difference between AI-assisted human creations and AI-generated creations”, with the latter raising issues in particular relating to inventorship and considers that “it would not be appropriate to seek to impart legal personality to AI technologies”.

Adopting a similar line of reasoning to the EPO, the UK High Court refused the DABUS-related patent applications in September 2020.

Denial of IA inventorship by the USPTO

In the same line, in July 2020, the United States Patent and Trademark Office (USPTO) refused a patent application on the ground that:

  • –the U.S. Code designates the inventor as a natural person (2);
  • –American case law and the USPTO’s Manual of Patent Examining Procedure define the conception of the invention as a “mental act” that can only be performed by a natural person (excluding not only artificial intelligence systems, but also, as already ruled by the US courts, states and legal persons).

Consequently, a patent application that does name a natural person as an inventor does not comply with the provisions of the U.S. Code (3).

Towards recognition of AI inventorship by the South African Federal Court

However, the protection of inventions made by AI recently took a major step forward in South Africa.

In July 2021, the South African Patent Office became the first to grant a patent for an invention conceived by DABUS. The inventor is identified as: “DABUS, The invention was autonomously generated by an artificial intelligence”.

According to Kirk M. Hartung, a lawyer with the American law firm McKee, Voorhees & Sease, PLC, quoted by the specialised website ipwatchdog.com, such a breakthrough must however be put into perspective as:

  • –South African legislation does not define the concept of inventor, and
  • –the South African Patent Office does not carry out any substantive examination of the patent application.

The progress appears more significant in Australia, where the Federal Court recently overturned the decision of the Australian Patent Office to refuse the DABUS patent application.

A recognition that is still fragile

The Australian examiner had considered that an AI system could not be an inventor under section 15(1) of the Patents Act 1990, which provides that a patent may only be granted to a person (inventor, successor in title or assignee of rights in the invention) (4).

The examiner then concluded that the patent application, which did not specify the name of the natural person inventor, did not comply with the provisions of the Patent Regulations 1991 (5).

The applicant, Stephen Thaler, appealed to the Federal Court of Australia. The Federal Court overturned the decision of the Australian Patent Office on the grounds that:

  • –Section 15(1) of the Patents Act 1990 does not define who is an inventor but only who may apply for and be granted a patent; the question is therefore whether Stephen Thaler’s patent application is valid, i.e. whether he is entitled to apply for a patent on the invention;
  • –Section 3.2C(2)(aa) of the Patents Regulations 1991 does not expressly require the name of a human inventor who is a natural person; therefore, there is nothing to prevent an artificial intelligence from being named as an inventor.

However, the Federal Court noted that a non-human inventor can neither be an applicant for a patent nor a grantee of a patent.

The Federal Court remitted the matter to the Australian Patent Office for reconsideration of the patent application.

To be continued…

Virginie Brunot and Justine Ribaucourt for Lexing France

Read the article (in French) on the website of Lexing France (Alain Bensoussan Avocats Lexing) 

Notes

(1) See Alain Bensoussan, Jérémy Bensoussan et Marie Schwartz, Intelligence artificielle : nouveau projet de Règlement (I), 17-6-2021 and  Intelligence artificielle : nouveau projet de Règlement (II), 26-6-2021.

(2) U.S. Code Title 35, art. 100 Definitions ; U.S. Code Title 35, art. 101 Inventions patentable ; U.S. Code Title 35, art. 102 Conditions for patentability – novelty ; U.S. Code Title 35, art. 115 Inventor’s oath or declaration.

(3) U.S. Code Title 35, art. 115 Inventor’s oath or declaration.

(4) Patents Act 1990, article 15: Who may be granted a patent?

(5) Patents Regulations 1991, section 3.2C: “(1) This regulation applies to a PCT application if the applicant complied with the requirements of subsection 29A(5) of the Act. (2) The applicant must: (aa) provide the name of the inventor of the invention to which the application relates. (…)”.