AI as inventor(s) at the UKIPO and EPO
This article outlines the recent DABUS cases before the UK and EPO which considered the issue of patenting of inventions created using an artificial intelligence (AI) system.
Both the UKIPO and the EPO have recently issued decisions refusing two respective applications that attempted to name a computer system as the sole inventor. In both cases the applications were refused for failure to comply with the formal provisions regarding the designation of the inventor.
The patent applications had been filed in the name of Dr Stephen Thaler, for inventions allegedly invented by an Artificial Intelligence (AI) called “DABUS”, with Dr. Thaler deriving the right to be granted a patent by virtue of ownership of the AI. The applications sparked much discussion and speculation about a central question – is it permitted to name an AI as an inventor on a patent application?
Both jurisdictions have now published their detailed reasoning. Although there is nothing explicit regarding the required nature of the inventor in either the European Patents Convention (EPC) or the UK Patents Act, the two jurisdictions have reasoned the question in different ways, ultimately coming to the same conclusion – an inventor must be a natural person.
The EPO had refused both applications because the designation of DABUS as the inventor did not fulfil the necessary ‘formal requirements’ for a European patent application. Specifically, the European Patent Convention (EPC) requires that the inventors for a European patent application be identified. The EPO concluded that, under the EPC, the term “inventor” refers only to a natural person. The EPO noted that various national courts have issued decisions supporting an interpretation of the term inventor as referring to a natural person, and that this therefore appears to be an internationally accepted principle.
The EPO’s reasoning extended beyond a mere statement of legislative intent – central to the reasoning of the decision was that, under the EPC, the status of “inventor” has certain legal rights attached to it which require a legal personality to exercise. A legal personality is something that a machine does not have, and the EPO stated that giving a name to the machine does not overcome this issue.
In issuing its decision, the EPO has not considered the issue of whether the AI has actually invented anything, or indeed who the inventor should be for the DABUS applications. Whether or not an AI can actually ‘invent’ is, perhaps, a more philosophical/societal question which might be answered elsewhere.
Both EPO decisions have now been appealed, with the Grounds of Appeal having been filed in May 2020. It is expected that development of the appeals may also have an impact on future UK practice in this area. However, it will be some time before we have clarification with EPO Legal Board of Appeal decision not expected until January 2022.
In response to objections raised against the statement of inventorship, Dr. Thaler had submitted that neither the Patents Act 1977 nor the EPC restricted inventorship to natural persons and an invention created by a machine should be owned by the owner of the machine. He argued that failure to do so would lead to natural persons who had not significantly contributed to the art being wrongly ascribed inventorship for creations made by AI systems.
The UKIPO responded by saying that the naming of a machine as an inventor did not meet the requirements of the 1977 Act and that a natural person must be identified as the inventor. Unsatisfied with the response, Dr. Thaler requested a hearing on the matter.
The Hearing Officer at the UKIPO held that non-human inventors were not contemplated when both the EPC and the UK Patents Act were drafted, and there is therefore a clear expectation that the inventor was a natural person and not a machine. The Hearing officer concluded that a machine could therefore not be regarded as an inventor.
The Hearing officer also considered whether the applicant could derive the right to be granted a patent. They concluded that a machine cannot hold property, and so could have no rights in the invention and could not enter into a contract to assign property.
Dr. Thaler went on to appeal the UKIPO’s decision on several grounds, namely:
(i) The applicant had not received an impartial hearing;
(ii) That the UKIPO had misdirected themselves in their approach to construing the relevant legislation; and
(iii) The patents act had been used as an illegitimate means of denying the applicant a patent.
The High Court rejected all three claims. In dismissing the last one, the presiding judge stated that, although Dr. Thaler honestly believed that he was entitled to apply for the grant of the patent, this did not allow him to bypass the requirement in Section 7 of the Patents Act 1977, which he said contained “an exhaustive code for determining who is entitled to the grant of a patent”. Dr. Thaler did not have a right of grant to a patent because DABUS, as neither a natural, nor a legal person, could not hold such a right and transfer it to him.
Interestingly, the presiding judge noted in postscript comments that he was not asked to opine on whether the person who owns an AI-powered machine, such as DABUS, could be said to be the “actual deviser of the invention”. While this argument remains untested in court, it brings us to the question of whether artificially intelligent machines are merely tools in the invention process or whether they are something more, something closer to human contributions to inventorship, and should be recognised as such.
The High Court’s findings sit neatly alongside the initial decision reached by the EPO. However, the questions raised in this case form part of the wider debate as to the future of AI and IP policy, with the UKIPO holding consultation asking questions, spanning a range of IP rights, on the implications of AI on IP law and practice. It appears the DABUS cases are only the start of the debate on this topic. The decision of the High Court has been appealed and as of the beginning September 2021 a decision is awaited.
The USPTO has also decided that DABUS is not an inventor.
A completely different conclusion has been reached in respect of the corresponding South African patent. The patent was published in South Africa's Patent Journal on July 28 and lists Stephen Thaler as the applicant and "DABUS”, as the inventor.
Although an unprecedented and perhaps unexpected step by the South African Patent Office, it should be pointed out that while patent law in many jurisdictions is very specific in how it defines an inventor as natural person, South Africa patent law has no such definition nor does the country have a substantive formal patent examination process. Because the same patent has already been rejected before the UK and EPO, it will be telling to see whether the patent is opposed and whether it survives the opposition.
Australia similarly turned heads when on July 30 the Australian Federal Court reversed the Australian Patent Office's rejection of Dr. Thaler's patent application for one of the DABUS inventions. The presiding Judge issued a 41-page opinion outlining why Australia's current statutory framework could be read as permitting the issuance of patents where an AI system is the inventor, declaring that "it is a fallacy to argue . . . that an inventor can only be human". This opinion is in stark contrast to those issued by other courts around the world but demonstrates just how polarising the issue of AI as an inventor is and we expect the lack of harmonisation will have long reaching consequences for applicants seeking protection in jurisdictions falling on different sides of the debate.