As artificial intelligence plays an increasingly important role in the R&D process, the premise that invention is a uniquely human characteristic is being challenged.
Patent offices and courts around the world have recently been grappling with the question of whether an AI system can be the inventor of a patent. This has been prompted by Dr. Stephen Thaler’s applications to designate his AI system (known as ‘DABUS’) as the inventor of patents filed in multiple jurisdictions. Most recently, the appeal board of the European Patent Office (EPO) refused Dr. Thaler’s patent applications because there was no valid inventor.
Dr. Thaler’s Artificial Inventor Project
Dr. Thaler, as part of the Artificial Inventor Project, is pursuing parallel patent applications across over fifteen jurisdictions which designate his AI system, DABUS, as the inventor. The EPO determined that only a natural person can be designated as the inventor of a patent and thus satisfy the requirements for a European patent. The EPO’s stance is aligned with that of the UK Court of Appeal, which decided in September 2021 that under the UK legislation an inventor must be a person with legal capacity and that if the inventor is a machine, no person has a right to be granted a patent for its invention.
Dr. Thaler is seeking to stoke debate around these issues. The UK Court of Appeal’s decision was based on detailed interpretation of the relevant legislation rather than policy considerations. As the power of AI develops, legislative reform will be needed. Internationally, the reactions to Dr. Thaler’s applications have been varied. Australia and South Africa have allowed patents designating DABUS as the inventor. In the United States, the application was refused, but the judge noted that in the future AI may reach a level of sophistication which satisfies the US definition of ‘inventor’.
Validity of patents for AI-generated inventions
In the UK, a patent may be granted to the inventor (who must be human) or to someone who derives ownership from the inventor (e.g. the inventor’s employer or assignee). While UK copyright legislation stipulates that the author of computer-generated works is the person who made the arrangements for the creation of the work, there is no equivalent in patent law. Importantly, however, in UK patent law there is a presumption that the applicant for a patent is entitled to be granted the patent. Whilst UK patents can be revoked if the patent was granted to a person not entitled to the patent, this type of invalidity claim may only be made by a person who establishes that they are in fact entitled to the relevant patent. Claiming that the invention was devised by a machine rather than a human does not, therefore, provide a ground for a third party invalidity claim.
Patent applicants should be mindful that inventions created by AI may face a greater risk of refusal. However, in many instances the research will be sufficiently human-led that a natural person can be specified as the inventor (notwithstanding AI’s contributions to the process). As part of his campaign, Dr. Thaler insists that DABUS should be the named inventor rather than himself, but others should be prepared to be more flexible in order to obtain protection.
Contracts for the use of AI in R&D
As AI distances the inventive process from the humans with responsibility for the research, identifying the (human) inventor and therefore entitlement to a resulting patent may be less clear-cut and may be more likely to give rise to competing claims from parties involved in the research. Contracts for the use of AI for R&D should pre-empt this uncertainty and include more detailed IP ownership provisions than might be expected in a traditional software licence or SaaS contract.
In addition, as AI becomes more responsible for inventions, owners of AI systems that make their technology available to support third parties’ research are more inclined to seek to negotiate ownership of inventions created by their AI – pitching themselves as a collaboration partner rather than a traditional IT supplier. Similarly, an AI developer may propose alternatives to the subscription-based fee models traditionally offered by software providers (e.g. royalties in respect of the inventions that their AI systems create).
For both UK and European patents, inventions that are conceived purely by an AI system and truly have no human inventor are likely to be refused, but humans that use AI can be validly named as an inventor instead. As AI becomes more sophisticated and human involvement reduces, legislative reform may be needed for AI-generated inventions to be appropriately protected. The process of reform is underway - the UK Intellectual Property Office is currently analysing the results of a consultation on AI and IP that took place in late 2021. The European Commission’s proposed Regulation on Artificial Intelligencei is a major step in regulating the use of AI. However, that proposed regulation does not address how the benefits of AI’s ingenuity, in particular IP, should be attributed. This will remain a matter for contractual negotiation. Where AI is expected to be central to the inventive process, the contractual terms need to account for the more prominent role of IT in the process.
i) Our previous OnPoints on the proposed Regulation can be accessed here: May 04, 2021 - European Commission Proposes Regulation on Artificial Intelligence; June 17, 2021 - European Commission’s Proposed Regulation on Artificial Intelligence: Requirements for High-Risk AI Systems; November 16, 2021 - European Commission’s Proposed Regulation on Artificial Intelligence: Conducting a Conformity Assessment for High-Risk AI - Say What?