In the last decade, there have been many discussions about patenting inventions related to artificial intelligence, but it is only in the last couple of years that advancements in technology have prompted various stakeholders to address the issue of inventorship with respect to AI-generated inventions.
The first case decided by EPO: DABUS – the creativity machine
Recently, the Receiving Section of the European Patent Office (“EPO”) refused two applications that listed a machine called DABUS, which is “a type of connectionist artificial intelligence”, as an inventor, since the applications failed to name a proper inventor pursuant to Article 81 EPC (“Designation of the inventor”) and corresponding Rule 19(1) EPC.
The applicant claimed that DABUS should be recognized as an inventor and the applicant, being the machine owner, should be considered as DABUS´ successor in title.
The EPO decisions were issued at the end of oral proceedings held on 25 November 2019, after the EPO decided to consolidate the proceedings concerning applications EP 18.275.163 (entitled “Food Container”) and EP 18.275.174 (entitled “Devices and Methods for Attracting Enhanced Attention”), since the applicant, his representative and the underlying relevant facts were identical. The Receiving Section published the decisions on 27 January 2020.
The EPO referred to Article 81 EPC, which requires that a European patent application shall include the designation of the inventor and to Rule 19(1), which specifies that such designation shall indicate the family name, given names and full address of the inventor. According to the EPO, indicating the name of a machine does not fulfill the requirements of Article 81 and Rule 19(1) EPC.
The decisions also provided a systematic and historical analysis of the European Patent Convention, concluding that:
The EPC does not provide for non-persons, i.e. neither natural nor legal persons, as applicant, inventor or in any other role in the patent grant proceedings. In the context of inventorship reference is made only to natural persons.
This signifies a clear legislative understanding that the inventor is a natural person and it is consistent with what appears to be the international applicable standard of national courts of various countries and the patent offices of at least China, Japan, Korea and the USA.
The EPO noted that a major challenge in the current legal framework is in that:
AI systems or machines have at present no rights because they have no legal personality comparable to natural or legal persons. Legal personality is assigned to a natural person as a consequence of their being human, and to a legal person based on a legal fiction. […] In the case of AI inventors, there is no legislation or jurisprudence establishing such a legal fiction.
Indeed, the lack of legal personality prevents AI systems or machines from enjoying any legal title over their output, including results that otherwise would be eligible for patent protection, and therefore no rights can be assigned to a successor in title under Article 60(1) EPC.
Finally, in response to the issue raised by the applicant concerning the right of the public to know the true identity of the inventor, the Receiving Section noted that:
The EPO does not verify the origin of the subject matter claimed in a patent application (cf. Rule 19(2) EPC). The legislator decided that it is for the public, including an inventor omitted from the designation, to challenge an incorrect designation.
Thus, incorrect designations should be challenged only before national courts.
The DABUS case at the UK Patent Office
The same issue concerning inventorship of AI-generated inventions had previously been raised by the UK Patent Office (“UKIPO”) with respect to corresponding patent applications n. GB1816909.4 for “Food Container” and 1818161.0 for “Devices and Methods for Attracting Enhanced Attention”.
With its decision dated 4 December 2019, the UKIPO reached precisely the same conclusion as the later EPO decision based on its interpretation of corresponding UK provisions, namely Section 7(3) and 13 of the Patents Act. In particular, Section 7(3) defines the inventor as “the actual deviser of the invention”. In a key passage of the decision, the UKIPO noted that:
Inventors other than natural persons were not contemplated when the EPC was drafted and also that this was never contemplated when the Patents Act was drafted. Given this, there is a clear expectation that the inventor and person for the purpose of sections 7 and 13 respectively are one and the same, namely a natural person – a human and not an AI machine. There has never been any indication from the courts that this is an incorrect interpretation and it is settled law that an inventor cannot be a corporate body. Even though the invention itself is said to have been created by DABUS, the applicant acknowledges that DABUS is an AI machine and not a human, so cannot be taken to be a “person” as required by the Act.
Moreover, addressing the process for assignment of rights, the UKIPO affirmed that “ownership of the inventor” is not an option provided by the Patents Act and, as a consequence, the applicant did not satisfactorily demonstrate acquisition of rights.
In conclusion, the UKPIO noted 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.
The current debate on AI inventorship
A particularly useful commentary on this topic is the academic study on AI inventorship authored by Dr. Noam Shemtov of Queen Mary University of London, which was published on the EPO´s website in February 2019.
The study reviews inventorship rules under the current patent regimes of several important jurisdictions (e.g., EPC member states, United States, China, Japan, Republic of Korea, United Kingdom, Germany, France and Switzerland) concluding that:
None of the relevant jurisdictions allows for AI systems to be considered as inventor under their patent law regimes and, furthermore, that the present legal landscape is not equipped to facilitate a definition of inventorship that includes AI systems.
In addition, the USPTO recently issued a Request for Comments on Patenting Artificial Intelligence Inventions, which was published in the Federal Register, Vol. 84, No. 166 on August 27, 2019 at p. 44889.
In response to the USPTO Request, several written comments were submitted, including contributions by AIPLA (8 November 2019) and AIPPI (12 November 2019), both of which appear to be skeptical about the possibility that AI can be inventive and completely exclude the role of a human inventor and, therefore, they did not recommend introducing changes to the existing law.
However, considering the fast pace of innovation and, in particular, the lack of complete understanding of AI by researches, it is certainly advisable to open a debate and address the legal issues that are arising from rapid technological change.
Indeed, the recent creation of a drug molecule by AI (see Exscientia´s and Sumitomo Dainippon Pharma´s project for treating patients with obsessive-compulsive disorder, which was announced on 30 January 2020), is likely to be followed by other AI projects in the pharmaceutical field.
In light of the above and given the current absence of a legal framework which recognizes legal personality to AI inventors, it is advisable to address inventorship issues in internal policies and in relevant agreements, especially in connection with projects occurring in a collaborative environment. These issues can be addressed, for example, in research & development agreements, work for hire or supply agreements.
Each particular circumstance should be evaluated on its own merits in order to identify the (human) inventor to be named in patent applications. Among the most common options that have been discussed is to identify the inventor as the person who understood and contributed mostly to the output produced by the AI system or machine (see Dr. Noam Shemtov´s study cited above). This would be consistent with considering AI as a tool. In contrast, other commentators have proposed that the owner of an AI system should be indicated as the inventor. Stay tuned for updates in this rapidly changing area of law.
The comments above are meant only as a brief overview of inventorship issues related to AI. For more information on this topic, or any other aspect of European IP law, please contact Berggren´s International Team at firstname.lastname@example.org. We would be pleased to assist you.
Please note that this overview is not meant as legal advice and that each specific matter should be evaluated in detail and on its own merits.
Mariella has 15 years of experience as an attorney at law and she supports Berggren´s Legal Team on various IP matters which have an international component. She has been a frequent speaker at international events and workshops on a variety of IP issues. At Berggren she focuses primarily on international business development.