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Can AI be an "inventor"?

Written by Tanisha Jhaveri for the Commercial Law section,



It is not a surprise that AI can make it's own creative choices. Ask it to combine the 'Birth of Venus' and the 'Primavera' by Botticelli and it will, in its own creative way. However, there remains the question of whether AI can be classed as an 'inventor'? And, whether AI creations can be awarded patents. This articles examines this and more to a greater detail.

The ever-evolving nature of technology introduces novel situations that legal systems must navigate. The emergence and advancement of generative AI has ignited debates in patent law worldwide, particularly concerning the pivotal question: Can AI rightfully be recognised as an "inventor"? Dr Stephen Thaler created an AI software called DABUS which generated two different inventions. During the application process, Dr. Thaler asserted that the inventions were exclusively conceived by DABUS and that, as DABUS's owner, he possessed the right to seek patents for these inventions. However, this was met with contrasting legal judgements in different jurisdictions. [1]

 

The UK Supreme Court ruled that an AI system cannot be named as an inventor in a patent. Noting the Patents Act 1977, Lord Kitchin stated “[w]e conclude that an ‘inventor’ must be a natural person. Only a person can devise an invention”.[2] Thaler was not entitled to apply for patents based on DABUS's creations. Moreover, the applications were flawed due to Dr. Thaler’s failure to identify a person he believed to be the inventor or his inability to clarify how he obtained the right to pursue these patents. Similarly, in the USA, the Federal Circuit upheld the lower court's ruling, affirming that DABUS does not meet the criteria of an "inventor" as outlined in the Patent Act.[3]

 

The attribution of inventorship to AI is impeded by its absence of agency, intent, and consciousness – prerequisites, essential to qualify as an inventor. Acknowledging AI as an inventor might potentially devalue the significance of human innovation and resourcefulness within the patent system. Furthermore, the complex legal and ethical ramifications stemming from AI inventorship remain incompletely comprehended, raising concerns about unforeseen repercussions that alterations to the patent system might entail.[4]

 

In contrast, the Federal Court of Australia held that AI systems could be deemed as inventors and South Africa approved a patent for one of the inventions credited to DABUS. These courts note that the growing nature of AI could require a non-traditional approach to the understanding of an “inventor”. Perhaps this is important to ensure transparency, accurate acknowledgment of AI-generated inventions and avoid unambiguous licensing rights for inventions originating from AI.

 

Many firms such as Allen & Overy, Pinsent Mason and Clifford Chance note that these judgements do not deeply delve into the broader question of the extent AI can be involved in gaining patent protection. Harry Muttock, a patent attorney at Pinsent Mason, said “The ruling does leave open the question of patentability in cases where AI is used as a tool which assists a natural-person inventor. Indeed, the Supreme Court said that had it been Thaler’s case that he was the inventor and had used DABUS as a ‘highly sophisticated tool’ of assistance, the case may have had a different outcome”. [5] Skadden notes that presently in the US, inventions exclusively generated by AI do not qualify for patent protection under existing legal standards.[6] Hence, one of the main questions for future debates is how we determine how much AI assistance is allowed so that inventions can still be eligible for patent protection.







References

[1] AllenOvery (2023) UK decides AI cannot be named an inventor of a patent, Allen Overy. Available at: https://www.allenovery.com/en-gb/global/blogs/tech-talk/uk-decides-ai-cannot-be-named-an-inventor-of-a-patent  .

[2] Thaler (Appellant) v Comptroller-General of Patents, Designs and Trade Marks (Respondent) [2023] UKSC 49

[3] Douglas R. Nemec, Laura M. Rann, Nemec, D.R. and Rann, L.M. (no date) Ai and patent law: Balancing innovation and inventorship: Insights: Skadden, arps, slate, meagher & flom LLP, Insights | Skadden, Arps, Slate, Meagher & Flom LLP. Available at: https://www.skadden.com/insights/publications/2023/04/quarterly-insights/ai-and-patent-law  .

[4] Holly (2023) Dunlap Bennett & Ludwig - Artificial Intelligence (AI) as an inventor?, Business & Litigation Lawyers. Available at: https://www.dbllawyers.com/artificial-intelligence-as-an-inventor/.

[5] Marfé, M. (2023) Ai cannot be an inventor under UK patent law, Rules Supreme Court, Pinsent Masons. Available at: https://www.pinsentmasons.com/out-law/news/ai-cannot-inventor-under-uk-patent-law-rules-supreme-court.

[6] n.3

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