At the Intersection of Technology, Law, and Business
February 13, 2020 - Artificial Intelligence + Robotics, European Union

Can AI Be an Inventor? Not at the European Patent Office.

Biometric Information as Personal Information In A Brave New World of Regulatory Compliance

The European Patent Office has denied two patent applications on the grounds that an AI system cannot be listed as the inventor.

For the first time, the European Patent Office (EPO) has issued a ruling on its approach to patent applications that designate artificial intelligence (AI) systems as inventors. In January 2020, the EPO published its reasons for rejecting two patent applications where the inventor named on the applications was an AI system called “DABUS.” The UK Intellectual Property Office (UKIPO) has also rejected the applications on similar grounds.  

What did DABUS “invent”?

The “Artificial Inventor Project,” a group of patent attorneys, filed two patent applications at the EPO covering inventions that were supposedly “invented” by DABUS, an AI system developed by Dr. Stephen Thaler (the “Applicant”). One application was directed to a light emitting device that could be used as an emergency signal beacon and the other was directed to a food container device.

Patent applications for these inventions were also filed at the UKIPO and the U.S. Patent and Trademark Office (USPTO).  

The decisions of the EPO and UKIPO

The EPO and the UKIPO both addressed three key issues in their decisions:

  1. Can an AI system be named as an inventor in a patent application?

The EPO and the UKIPO respectively applied the formal requirements of the European Patent Convention (EPC) and the UK Patents Act (UK PA), both of which require an inventor to be a named person. The EPO went one step further, stating that the requirement for an inventor to be a named person appears to be an international standard, citing a study that it had conducted on the concept of AI inventorship in multiple countries.

While the UKIPO acknowledged that the idea of an AI inventor had not been contemplated when either the EPC or the UK PA was drafted, because the wording of the UK PA is clear and no other court had supported the concept of an AI inventor, the UKIPO was unable to decide that an inventor could be anything else besides a “natural person.”

  1. Would naming a natural person as an inventor mislead the public?

Before the EPO, the Applicant argued that incorrectly listing a human as the inventor would mislead the public. The EPO rejected this argument, stating that the EPO does not verify the accuracy of named inventors. The EPO also pointed out that, because the application would be published, any member of the public could question or challenge its contents in national courts. 

  1. Can an AI system transfer the right to apply for a patent to its owner?

The Applicant argued that he obtained the right to apply for the patents from DABUS. However, both the EPO and UKIPO rejected the idea that a machine or AI system could own any intellectual property rights. If an AI system is unable to own any intellectual property rights, then it is unable to assign or transfer such rights to its owner.

Will these decisions discourage the distribution of information about innovations involving AI?

The UKIPO considered this point, but decided that the dissemination of information about innovations involving AI may occur in a number of ways, not just through the publication of a patent application or patent.

Additionally, the UKIPO noted that recognizing an AI system as an inventor would not affect the likelihood that information about AI innovation would be available to the public because this decision would ultimately be made by the owners or developers of the AI system.

What happens next?

Currently, it appears that an inventor must be a named human person for a patent application filed at the EPO and the UKIPO.

However, the UKIPO observed, in its decision, that the present patent system may not properly cater to inventions by AI systems, and encouraged a wider debate on this issue.

As the Applicant has the right to appeal both decisions, higher courts may provide additional guidance on this issue in the future.

The USPTO has not rejected these applications. On August 27, 2019, the USPTO published a Notice in the Federal Register requesting information from the public on AI patent-related issues, including whether current patent laws and regulations regarding inventorship need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of an AI invention or any other invention.

London-based Trainee Solicitor, Danial Alam, contributed to the writing of this article.