Artificial intelligence created inventions – Patentable or not?
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Topics Intellectual Property Law | Technology Law
06 Jul 2021
As a general rule, the law lags behind technology. The exponential growth in the field of Artificial Intelligence (AI) taking place across the world is testing current patent laws and raising new legal and ethical questions that have never been contemplated before. One of the most important questions raised is whether current patent laws adequately deal with the increases in machine autonomy when it comes to inventorship.
In 2015, a breakthrough discovery in the fight against malaria was made by a robot scientist, a term that denotes a complex mechatronic system for automated drug discovery, named Eve. The achievements of Eve, as well as other robot scientists, raise an important question regarding patents and law: can such a machine be an inventor in the sense of the law, and if so, who is entitled to a patent which is granted for an invention created by such a machine?
Decisions in foreign jurisdictions
Patent offices in the UK, the US and Europe have been contemplating the question of whether machines can be inventors. Two similar patent applications were received and considered by all three of these patent offices.
The first patent application claims a food or beverage comprising walls having a fractal portion which provides a series of fractal elements forming pits and bulges. The fractal profile enables multiple containers to be coupled together and improves grip and heat transfer through the container. The claimed fractal elements were developed autonomously by a machine, more specifically DABUS, which is an acronym for Device for Autonomous Bootstrapping of Unified Sentience.
The second patent application covers devices and methods for attracting enhanced attention, which can be used in beacons alerting others of emergency situation, and which were also developed by DABUS.
DABUS was the only cited inventor in the patent applications which were filed by Dr. Thaler that tendered that he had acquired the right to apply for the patents in question by “ownership of the creativity machine DABUS“.
On 22 April 2020, the United States Patent and Trademark Office (USPTO) issued a decision stating that inventorship under U.S. patent law is limited to natural persons and rejected the application for the invention where DABUS was named the only inventor. The USPTO found that words like “whoever” and “individual” that are used in U.S. patent law provides the basis that patent law is limited to natural persons only.
The European Patent Office (EPO) also refused this application in January 2020 with the primary concern being the rights that accompany inventorship under a patent system. The EPO concluded that these accompanying rights require legal personality to be exercised, something that an AI machine lacks. The EPO considered that interpretation of the European patent system framework led to the conclusion that the inventor of a patent must be a natural person.
The UK High Court rejected an appeal on AI inventorship in the debate around DABUS. The judgment states an artificial intelligence system cannot be an inventor, upholding a decision by the United Kingdom Intellectual Property Office (UKIPO). The UKIPO stated that Thaler is not entitled to apply for a patent based on the ownership of DABUS. The UKIPO decided that ultimately the Patents Act 1977, as amended, prohibits the granting of the patent since DABUS is a machine and not a ‘natural person’. This decision mirrors decisions taken by the EPO and USPTO. The Court of Appeal acknowledged the international interest and the important principles raised by this case in its order granting Dr. Thaler permission to appeal the UK Patent Office’s decision a second time, to the Court of Appeal.
Position in South Africa
Like in other jurisdictions, South African patent law governs the granting of patents valid for the territory of South Africa. South Africa, however, also has to adhere to the provisions of the Paris Convention and the requirements of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
In South Africa, the Patents Act No. 57 of 1978 states that an application for a patent in respect of an invention may be made by the inventor or by any other person acquiring from the inventor (referred to by the pronoun “him”) the right to apply. Although there is no definition of inventor in the Patents Act, it is submitted that the definition of the inventor in terms of current South African patent law, and the specific reference to the inventor by a pronoun generally used when referring to a person, would be interpreted similarly to the EPO position, namely that inventorship has accompanying rights which require legal personality and as such that inventorship is limited to natural persons.
The case of DABUS is the first case in which an AI inventor has been formally named in a patent application and the case’s rulings throw up some puzzling questions where artificial intelligence is increasingly being used in the discovery process.
Time will tell whether AI can be an inventor but it would most likely take legislative action to change the patent laws of various jurisdictions before an AI can be named as an inventor in a patent application.
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Jacques Steyn is a candidate attorney at KISCH IP. He has a BEng (Mechanical) from the University of the North West. Read more about Jacques Steyn