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14 May 2020

Could artificial intelligence invent?

By Deborah Polites and Richard Hoad

A patent application naming artificial intelligence as "inventor" would be unlikely to be permitted in the Australian patent system.

The use of artificial intelligence is growing – and so are the legal questions. In a case that sets out the legal and policy questions for Australian intellectual property law, the US Patent and Trade Mark Office recently joined the UK and European patent offices in refusing to accept patent applications in which DABUS – an enhanced artificial intelligence system developed from what is known as "The Creativity Machine" technology – is named as the inventor.

The US patent application

Stephen L. Thaler, AI proponent and the inventor of DABUS, applied for two patents (for inventions unrelated to AI) as assignee from DABUS. Mr Thaler provided an assignment document which he had signed on behalf both of the assignor (DABUS) and the assignee (himself). The fact that the named inventor was not a person capable of signing a document highlights the inherent difficulty with a patent application citing artificial intelligence as inventor.

The USPTO served Mr Thaler with a notice requiring the application to be rectified to name an inventor correctly, and has now refused a petition by Mr Thaler for that notice to be set aside. In its decision, the USPTO noted that the relevant US legislation uses the pronouns "whoever" and "himself or herself" to refer to the inventor, and requires that the "inventor" who executes an oath or affirmation must be a "person". Previous US case law had confirmed that in the context of an "inventor", a "person" must be a "natural person" rather than a corporation or State entity. Those cases held that to perform the mental act of "conception", an inventor must be a natural person, not a corporation or sovereign entity.

The UK patent application

The UK IPO took a similar approach, having updated its examiner's manual in late 2019 to provide that "An 'AI Inventor' is not acceptable as this does not identify 'a person', which is required by law.". The UK IPO Hearing Officer found that as DABUS was a machine, it could not be regarded as an inventor. Additionally, it was noted that there was no law allowing for the transfer of ownership of the invention from the inventor to the owner, "as the inventor itself cannot hold property". It is interesting to contrast the position in related to AI created inventions with the law in the United Kingdom in relation to copyright, which expressly provides protection for computer-generated copyright works.

What is the likely position under Australian law?

The same conclusion would be likely to be reached in Australia. The equivalent provision in the Patents Act in Australia refers to the inventor as a "person". Generally speaking, under Australian law the term “person” may mean either a natural or a legal person. However, section 15 of the Patents Act also provides that "a patent may be granted to a person whether or not he or she is an Australian citizen" [emphasis added]. This suggests that the inventor must be a natural person.

Even if, in contrast to the US position, a "legal person" (corporation or State entity) were to be considered capable of being an "inventor" under Australian law, an AI machine does not have the status of a "legal person". The policy implications of granting such status to artificial intelligence machines would reach far beyond patent law. In theory, the law could be changed to allow artificial intelligence machines to be listed as patent inventors, or, potentially, as co-inventors only, without according them the status of a legal entity.

Whether that should occur, however, is another question entirely. The concepts of invention and inventorship are central to patent law. The idea of human endeavour is key to these concepts, and to change this would represent a significant philosophical, as well as legal, paradigm shift.

Does AI actually invent?

In making its decision, the USPTO did not reach a view on whether DABUS had, in fact, invented the invention the subject of the application. The rejection of the application was simply on the basis that "US patent law does not permit a machine to be named as the inventor in a patent application."

This unresolved question – whether AI can actually invent – is a critical one. Indeed, it reveals a fundamental difference between the concept of authorship (under copyright law) and inventorship (under patent law). Specifically, Australian courts have made it clear that AI generated works will not be protected by copyright if there is insufficient human authorial contribution.

In contrast, it is debatable whether AI can actually invent. The argument in favour of the inventive achievements of AI is often (and, no doubt, of necessity) made by the inventors of the machines themselves. While Mr Thaler believes that DABUS is a "true artificial inventor", scientific opinions differ on the nature of the "thinking" performed by these machines. In other words, there is debate as to whether an AI machine conceptualises in a manner that would constitute invention as it is understood in patent law. But this does not mean that an invention resulting from the use of AI is not capable of protection. A human programmer of such a machine would seem to have a good claim to be the inventor.

Even if AI can legitimately perform an inventive process distinct from the programmer, the policy benefits of according inventor status to AI machines need close attention. The invention is seen as the contribution to society that justifies granting a patent, with its 20 year monopoly. The UK IPO hearing officer observed that it is not clear how granting patents to AI inventors would provide incentive to encourage future inventiveness in human inventors. An AI machine cannot enjoy the benefits of the patent monopoly; those benefits would, one assumes, pass to the inventor of the machine (as with DABUS and Mr Thaler).

Of course, there are huge benefits to be gained from using AI in the inventive process. If AI is merely a tool in the toolbox of a human researcher, then the human will be the inventor. But what about a situation where the AI plays a more pivotal role? Is it clear that an AI generated invention will always find a human author, and therefore be capable of patent protection? If not, at what point is it no longer possible to identify a human inventor? AI could conceivably assist in shortening R&D timeframes by months or even years. If that shortened timeframe relates to, for example, the development of a coronavirus vaccine, then surely that is to be encouraged. The question is whether Australia's current patent law encourages this sufficiently, or whether there are gaps.

These are not easy policy decisions to make – but it is timely to ask these questions, and to look for answers, given the rise of AI in many fields of commercial activity and society.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.