Patently Obvious? AI as an Inventor After DABUS

Morgan Lewis - Tech & Sourcing

Morgan Lewis - Tech & Sourcing

On 7 September 2020, the UK government published a call for views on the future relationship between artificial intelligence (AI) and intellectual property (IP). Though the government called for views on all areas of intellectual property law, this article shall focus on patent law.

In 2019, patent applications were filed in parallel at the UK Intellectual Property Office (UKIPO), European Patent Office (EPO), and US Patent and Trademark Office (USPTO) by a physicist named Stephen Thaler, who claimed that his AI creation, DABUS, had produced inventions on its own initiative. All three jurisdictions refused Thaler’s application. The DABUS decisions confirmed that, for the purpose of patents, an inventor must be a natural person, i.e., a human. Proponents of these decisions argue that AI is no different to utilizing existing tools such as a microscope or computer.

Prior to these rulings, there were few legal precedents concerning AI inventorship. There is little debate that such patents are being granted: in 2019, the UKIPO reported that in 2017, almost 30,000 AI-related patent applications were published globally. However, the UK government is seeking views on the moral quandary: ought we to recognize AI as an inventor from a moral perspective? Their questions include:

  • Can current AI systems devise inventions? Particularly:
    • to what extent is AI a tool for human inventors to use?
    • could the AI developer, the user of the AI, or the person who constructs the datasets on which AI is trained, claim inventorship?
    • are there situations when a human inventor cannot be identified?
  • Should patent law allow AI to be identified as the sole or joint inventor?
  • If AI cannot be credited as inventor, will this discourage future inventions being protected by patents? Would this impact on innovation developed using AI? Would there be an impact if inventions were kept confidential rather than made public through the patent system?
  • Is there a moral case for recognising AI as an inventor in a patent?
  • If AI was named as sole or joint inventor of a patented invention, who or what should be entitled to own the patent?

Appeals were filed in the EPO in March 2020; the UKIPO decision was reviewed in the England & Wales High Court on 15 July 2020 and is awaiting judgment. Morgan Lewis shall update this blog as the cases progress.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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