Two patent applications filed at the European Patent Office (EPO) naming an Artificial Intelligence (AI) as the sole inventor marked the start of a series of applications testing the position of patent offices worldwide on what is becoming an increasingly contentious issue: should AI be recognised for inventive activity? The Intellectual Property Office of New Zealand (IPONZ) has become the latest patent office to conclude that an AI cannot be named as an inventor on a patent application under local legislation.
The decision is at odds with the current position in Australia and suggests a need to rethink our definition of “invention” and hence “inventor”.
Background
Dr. Stephen Thaler named his patented machine, DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), as the inventor on two patent applications, EP 18 275 163 (a food container) and EP 18 275 174 (a pulsed light source for attracting attention). Dr. Thaler argued before the European Patent Office (EPO) that DABUS was not created to solve any particular problem, and that the AI recognised the novelty and potential inventiveness of its creations before a human did. Both applications were refused by the EPO on the grounds that an inventor must be a human being. Our detailed discussion of these initial events and their implications may be found here. The two “inventions” generated by DABUS were combined into an international application, PCT/IB2019/057809, which has been used to test the position of other patent offices.
Stephen L. Thaler [2022] NZIPOPAT 2 (31 January 2022)
New Zealand patent application no. 776029 in the name of Stephen L. Thaler is the New Zealand national phase of PCT/IB2019/057809. Examination was requested at the time of national phase entry. The first Examination Report included objections based on unity of invention and inventive step, and formalities objections, including an allegation that inventor detail/s had not been provided on the basis that DABUS cannot be recognised in that capacity. In response, Dr. Thaler argued that the Commissioner had no remit to object to the inventor and also that DABUS was the inventor according to the definition included in the Patents Act 2013, being “the actual deviser of the invention”. Despite overcoming all other objections raised, the inventorship issue was not resolved and a request for a hearing was filed.
The Commissioner concluded that DABUS could not be an inventor under the Act on the grounds that DABUS is not a natural person. The Commissioner argued that, although the definition of an inventor under the Act merely requires the inventor to be the actual deviser of the invention, several other sections of the Act, namely ss3, 22, 177, and subpart 7, explicitly refer to the inventor as a person, and that s5 implies that the inventor is a person. In a rigid construction of the purpose of the legislation, he argued “If the legislators had intended to allow granting of patents in New Zealand for inventions devised solely by non-humans such as artificial intelligences, or life forms other than human beings they would have drafted the Act to accommodate these possibilities specifically and explicitly.” The Commissioner was of the view that it was not possible for Dr. Thaler to derive entitlement from the inventor, and the decision also concluded that formality requirements had not been met insofar as the application was not accompanied by the name/s and address/es of inventor/s.
Dr. Thaler may decide to appeal the Commissioner’s decision, as he has in several other jurisdictions.
DABUS in other jurisdictions
The inventive activity of DABUS has been recognised in two jurisdictions so far: Australia and South Africa.
– Australia
The initial events in the Australian case followed a similar course to that of New Zealand in that formalities objections prevented acceptance of the application. The application proceeded to a hearing in which the Delegate of the Commissioner of Patents concluded that an AI could not be named as the inventor because an inventor must be a natural person. Our detailed discussion of the decision may be found here. Dr. Thaler appealed the Delegate’s decision to the Federal Court of Australia.
Surprisingly, the Delegate’s decision was overturned in the Federal Court, where Justice Beach made Australia the first jurisdiction to rule that an AI can be an inventor for a patent application. The decision noted that “inventor” is not defined in the Patents Act 1990 or Patents Regulations 1991. His Honour reasoned that an inventor is an agent noun, which may be a person or a thing. Perhaps more importantly, Justice Beach argued that the concept of an “inventor” should be interpreted flexibly in a similar way to “manner of manufacture” in D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334, taking into account advances in technology and the objectives of Australian patent legislation. His Honour did not consider that listing DABUS as the inventor posed a problem to Dr. Thaler in terms of deriving entitlement to the invention in view of his ownership and control of DABUS. Our more detailed discussion of the appeal decision may be found here. The Commissioner of Patents has decided to appeal the Federal Court’s decision.
– South Africa
A patent for an invention entitled “food container and devices and methods for attracting enhanced attention.” was published in South Africa’s Patent Journal on July 28 and lists Stephen Thaler as the applicant and “DABUS, The invention was autonomously generated by an artificial intelligence,” as the inventor. South Africa is the first country to grant a patent for an invention conceived by an AI. Although the grant of the patent was unexpected, South African patent legislation does not include a definition of “inventor”. South Africa also lacks a substantive formal patent examination process. It remains to be seen whether the patent will be challenged in view of decisions in other jurisdictions.
– Other jurisdictions
Both the U.S. and European patent offices, along with the patent offices in several other jurisdictions, have ruled that an inventor must be a human being. In the U.S., two separate applications were filed, and the U.S. Patent and Trademark Office (USPTO) refused to allow them to proceed with DABUS listed as the inventor. An appeal (Thaler v. Hirshfeld) held that an AI could not be an inventor because an inventor must be an “individual,” which under common interpretation and precedent means a natural person. The court also noted that this ruling was consistent with the U.S. requirement for a declaration that the individual believes “himself” or “herself” to be the original inventor of the invention claimed.
The original decision by the EPO was also appealed and in public oral proceedings the EPO confirmed that under the European Patent Convention (EPC), an inventor designated in a patent application must be a human being. The full written decision and reasons are yet to be published.
A recent decision by the German Federal Patent Court suggested that the person behind the process be named as the inventor on the inventor form and that this may be supplemented by the AI.
Conclusion
The issues raised in the decisions discussed above may appear somewhat academic and an obvious practical solution under the current regime would be to list human being/s as inventors on all patent applications. However, the role of AI in innovation and invention is only likely to increase and continue to create challenging questions. In addition to inventing, an AI may eventually be considered a hypothetical ‘person’ skilled in the field relevant to the assessment of whether the claims of a patent provide an inventive step. Increased use of AI could thus lead to an argument for an increase in the threshold for inventiveness.
Drug discovery is just one area of innovation in which AI is playing an increasingly important role and in which patent protection is crucial to investment in innovation. The decision in the Australian Federal Court appeal was made in the context of the objects clause and the broader objectives of the legislation, which appear to have been overlooked in the New Zealand decision. If patent protection is to fulfil its important role in incentivising innovation, patent laws and regulations in relation to both inventorship and derivation of entitlement may require adjustment in many jurisdictions to keep pace with advancements in technology.
Given that DABUS has demonstrated the ability to devise a problem to be solved and a corresponding solution without any human input, perhaps the decision on whether AI can be named as an inventor on a patent application will eventually be made by AI itself…