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Artificial Intelligence as an Inventor on Patents – The Global Divide and the Path Forward

Posted: 12/20/2021
Services: Intellectual Property

DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) is an artificial intelligence (AI) system created by Dr. Stephen Thaler. It reportedly conceived two separate inventions without any human intervention and therefore, was designated as an inventor on patent applications related to those inventions. The idea of assigning inventorship to an AI-machine not only brought new legal challenges but also left the global intellectual property (IP) community divided regarding whether an AI-machine can/should be allowed to be named as an inventor on patents related to AI-created inventions. 

What You Need to Know:

  • Artificial intelligence (AI) constitutes simulation of human intelligence by machine.  
  • AI can now, without any human intervention, create innovation on its own.  
  • Although presently in most jurisdictions the IP laws do not have specific provisions to accommodate a non-human entity as an inventor on patents, there are jurisdictions that have allowed an AI machine to be designated as an inventor on patents.

In 2018 and 2019 a U.S.-based scientist, Dr. Stephen Thaler, filed parallel patent applications in various jurisdictions across the world, in which he listed an AI-machine called “DABUS” (short for Device for the Autonomous Bootstrapping of Unified Sentience) as an inventor. These applications were related to two different inventions—an improved food container that uses fractal geometry to change its shape and a type of flashing light device, designed to attract attention during an emergency incident, that can be used in search and rescue missions. DABUS was described as “a type of connectionist artificial intelligence.” It was further stated that DABUS had “identified the novelty of its own idea before a natural person did” and therefore should be recognized as the inventor.

Amongst various jurisdiction in which the DABUS-invented applications were filed, thus far the South African patent office and the Federal Court of Australia have accepted DABUS as an inventor, while the European Patent Office (EPO), the United Kingdom Intellectual Property Office (UKIPO), and the United States Patent & Trademark Office (USPTO) have not, taking the stance that an inventor must be a natural person. The following segments briefly highlight the basis of the AI-inventorship related decision in each of the aforementioned jurisdictions.

South Africa: South Africa’s patent office became the first one in the world to grant the patent for an invention conceived by an AI-machine, DABUS. However, it is vital to note that the South African patent laws do not define “inventor”; the country also does not have substantive patent examination system.

Australia: On July 30, 2021, the Federal court of Australia overturned the Australian patent office’s rejection of granting inventorship to an AI-machine while ruling that an artificial intelligence system can indeed be an inventor. This ruling provided rationales including, “First, an inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion.”  Additionally, the court made it clear that the ruling affects only patent inventorship and not patent ownership.

Europe and United Kingdom: Contrary to South Africa and Australia, the EPO and the UKIPO rejected granting inventorship to an AI-machine. The EPO concluded that, under the EPC (European Patent Convention), the term “inventor” refers only to a natural person. The EPO also stated that the status of “inventor” has certain legal rights attached to it, which require a legal personality to exercise and that merely giving a name to a machine does not impart a legal personality to the machine. The UKIPO based its decision on reasoning similar to that cited by the EPO.

United States: The USPTO also rejected Dr. Thaler’s listing of an AI-machine as an inventor in his patent applications. The USPTO reasoned that a plain reading of statutory provisions governing patents consistently refer to inventors as natural persons. For example, the USPTO referred to 35 U.S.C. §§ 100(f)-(g) and § 101, where terms such as “individual” and “whoever” are used in the context of inventorship, and took the position that this language implies that inventors have to be natural persons. Further, the USPTO noted that 35 U.S.C. § 115(b) requires that an oath or declaration be signed by an individual when that individual believes “himself or herself” to be an inventor of the claimed invention. Additionally, the USPTO cited various Federal Circuit precedents stating that only natural persons can be inventors. For example, In University of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V, 734 F.3d 1315, 1323 (Fed. Cir. 2013), the Federal Circuit rejected corporations or sovereigns from being listed as inventors. Accordingly, because the relevant statutes limit inventorship to natural persons, the USPTO concluded AI systems cannot be listed as inventors.

Additionally, in September 2021, U.S. District Judge Leonie Brinkema of the Eastern District of Virginia dismissed a suit that was filed by Dr. Thaler, who sued the USPTO after it rejected his applications for inventions developed by DABUS. Echoing the USPTO’s comments, Judge Brinkema reiterated that U.S. law refers to an inventor as an “individual,” and cited court decisions defining that term to mean a “natural person.” She reemphasized that “artificial intelligence machines or systems are not normally referred to as 'individuals' in ordinary parlance.”

Addressing the future of AI-developed inventions, Judge Brinkema stated, “As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy the accepted meaning of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.”

It is clear that AI is evolving quickly and will find its way into more and more aspects of our lives in the coming years. The debate sparked by the DABUS-developed inventions will undoubtedly require the global intellectual property community to revisit and revamp laws and regulations related to AI and patent inventorship in the near future.