• Maria Polycarpou

Man versus Machine: Can an AI System be a Patent Inventor?

The use of Artificial Intelligence (AI) is becoming increasingly integrated into the modern world. Gone were the days that AI was a mere piece of science fiction. As AI systems evolve and become more complex, so does the number, variety and sophistication of actions they can perform; they may even go so far as to invent things all on their own. How is this reconciled with the current EU and UK intellectual property regime? The short answer: it is not; inventorship is limited to natural persons. The so-called ‘DABUS’ saga has proved as much, since an AI has been rejected the title of inventor under the EU and UK patent systems. This article will break down the court’s reasoning in this case in light of the relevant legislative provisions. A key underlying question to consider is whether machines are merely tools in the invention process, or are they something closer to human contributions to inventorship which should be recognised as such?

The ‘DABUS’ Saga

The Device Autonomously Bootstrapping Uniform Sensibility (“DABUS”) is a “Creativity Machine” that uses neural networks to generate new inventions. It is essentially a machine learning mechanism. DABUS was created by Dr Stephen Thaler, who applied for two patents in 2018, in his own name, but naming DABUS as the inventor. The two patent applications naming the algorithm as an inventor relate to a food container and a flashing light being used in emergencies. The main argument of Dr Thaler and his team was that the machine only received training on the general knowledge in the field, and proceeded to conceive the invention independently and to identify it as novel and salient. Therefore, Dr Thaler claimed that inventorship was not limited to a natural person and also that the rights of a non-person inventor should vest in the owner of the inventor, before the UKIPO. He also argued that he had acquired the right of grant to the patents from DABUS. The UK Intellectual property Office (UKIPO) rejected both these arguments on the basis of the Patents Act 1977 (PA) which limits inventorship to natural persons. Moreover, as a non-person, DABUS is unable to hold property rights and, thus, could not transfer the rights to the invention to Dr Thaler.

Dr Thaler tried to appeal against the decision of the UKIPO, but the UK High Court dismissed the appeal. What was important in this case was that judge Marcus Smith J, analysed the claim in light of s.7(3) of the PA, which stipulates that the inventor is the ‘actual adviser’, and the UK House of Lords case of Yeda [2007] which interpreted ‘actual adviser’ to pertain to ‘natural persons’. Crucially, the requirement of ‘inventive step’ in patent applications is assessed by the standard of ‘the person skilled in the art’. In light of these definitions, Marcus Smith J considered that non-person inventors are an over-extension of established principles. Moreover, under s.7(2)(a)-(c) PA there can only be three ways in which there can be a transfer of rights to the invention, of which none apply in this case as DABUS is not a 'person', and thus falls outside of the ambit of the act. The result is that Dr Thaler never acquired the right of grant to the patents from DABUS. The decision to dismiss the appeal from the UK High Court is not a surprising one. Dr Thaler has had his patent rejected by the EPO (European Patent Office) and USPTO (US Patent Office) and is still waiting for his patent application result in other countries. He appealed both EPO and USPTO decisions (the results of which are still pending), but the outcome is unlikely to change.

While the practical solution for Mr Thaler would be naming himself as the inventor, and not highlighting the issue (which he had refused to do because he did not believe it to be morally correct to take credit for something he had not directly invented himself), doing so would leave the patent vulnerable to challenge. The Patent Act allows any 3rd party to challenge patent decisions under inventorship. The outcome would be that Dr Thaler would be removed as the inventor of the patent since the AI system is the actual inventor, but the patent itself would not be revoked (s.13(3) PA). That would leave a patent in place without an inventor, which leaves a gap in patent law for AI-generated inventions. This is intrinsically problematic. Does this undermine the entire concept of inventorship under the PA? If the incumbent regime would allow a blank space on the inventor tab rather than attribute an invention to an AI system, then the entire value of inventorship becomes diluted. In comparison, other IP rights, for instance, those that fall under the UK Registered Designs Act 1949 s.2(3)(4) expressly codify who should be considered the author of a computer-generated design which is the person by whom the arrangements necessary for the creation of the design are made.

Underlying Considerations

One of the reasons that courts in different jurisdictions have been hesitant to accept Dr Thaler’s arguments is that his AI system is not sophisticated enough to be considered equivalent to the workings of the human mind. Although that may be true, and a scenario where this could be a reality is ‘decades into the future’, why should legislators wait to deal with the storm when it arrives instead of preparing for it when they can? Both the UKIPO hearing officer and Mr Justice Marcus Smith have alluded that the issue brought by Mr Thaler is a matter of legal policy regarding artificial intelligence and, perhaps, it should be a matter to be considered by legislators.

“I have found that the present system does not cater for such inventions and it was never anticipated that it would, but times have changed, and technology has moved on. It is right that this is debated more widely and that any changes to the law be considered in the context of such a debate, and not shoehorned arbitrarily into existing legislation.

Another important issue that arises regarding AI inventorship is that disputes may arise regarding ownership of inventions which have benefited from the use of AI technology. There are many sources which contribute to the development of AI systems. Patent ownership in most such circumstances is addressed contractually. Still, when this is not the case, the law is left to deal with identifying who the natural person who came up with the inventive concept is, which may give rise to disputes. These disputes could give rise to entitlement claims that could revoke the patent itself, or inventorship claims that would serve to remove the patent inventor and replace it with another contributor to the AI system – which would create an endless loop of disputes which would not need to take place had AI systems been able to be named inventors in the law.

Concluding Remarks

The DABUS saga has brought to light that the incumbent IP regime needs technological ‘revamping’ and that lawmaker hesitation to do so will only cause more complexity in the long run as AI systems become more and more sophisticated. Do you believe that AI systems should be recognised as inventors in the future, or does the current rationale adequately account for this issue? One thing is certain, in the war for patent rights, it is Humans 1 and Dabus 0.

The DABUS saga is not over yet, stay tuned to Law Forward for updates on the upcoming developments of Dr Thaler’s quest to name DABUS as an inventor.