UK Intellectual Property Office finds that patent law does not cater for inventions created by AI machines and calls for debate

The UK Intellectual Property Office has found that DABUS is not a person and so cannot be considered an inventor of a patent. DABUS is an artificial intelligence (AI) machine. The UKIPO accepted the indication of DABUS as inventor at face value and did not argue that AI technology is only a tool which is incapable of independently creating an invention. The hearing officer found that even if DABUS is an inventor there was no valid chain of title from DABUS to the human applicant, even though the human applicant is the owner of DABUS. The hearing officer called for potential changes to the law and not to make attempts to “shoehorn arbitrarily into existing legislation”.

The facts of the decision

The decision concerns two UK patent applications (GB1816909.4 and GB1818161.0) filed in the name of a human applicant.

The applicant filed statements of inventorship for both applications. The statements of inventorship explained that the inventor is an AI machine called DABUS and that the applicant derived the right to grant of the patents by “ownership of the creativity machine DABUS”.

The UKIPO wrote to the applicant saying that the naming of a machine as inventor does not meet the requirements and that a person must be identified. The UKIPO asked the applicant to provide a statement indicating how he derived the right to grant of the patent from the inventor and explained that failure to provide the necessary information within the prescribed period would result in the applications being taken to be withdrawn. The applicant maintained that the statement of inventorship fully meets the requirements and requested a hearing.

The full decision is available at:

https://www.ipo.gov.uk/p-challenge-decision-results/o74119.pdf

Legal arguments

The applicant argued that the relevant law uses the word “person” and this word is not limited to a human and encompasses a company. In reply the hearing officer explained that it is settled law that an inventor cannot be a corporate body and that DABUS is a machine and so not a “person” as required by the Patents Act.

The applicant argued that “the actual devisor of the invention” needs to be given and supersedes the requirement of identifying a “person or persons whom he believes to be the inventor or inventors”.

The applicant argued that the functions of the relevant sections of the Patents Act is to identify the actual devisor of the invention and failure to acknowledge this would mislead the public

The applicant argued that the Travaux Preparatoires of the European Patent Convention are useful to understand the formal requirement for mentioning the inventor and that these do not prohibit patenting inventions made by AI systems. In reply the hearing officer explained that the Intellectual Property Office is not able to take an interpretation of law that was not intended upon implementation and where there have been no indications from the courts or legislature that a “person” should be construed as anything other than a natural person.

The applicant argued that the spirit of the relevant patent law is met by providing an honest answer to the question of who is the devisor and the applicant should not be penalised for this.

The applicant argued that ownership of DABUS is sufficient to show how the applicant is entitled to the inventions created by DABUS. The hearing officer said that ownership of an inventor was not one of the options in the relevant section of the patent law and so the applicant was not entitled to the invention.

The applicant argued that filing a statement of inventorship is not a substantive legal requirement for patentability because failure to comply results in the application being withdrawn rather than being refused. The hearing officer agreed and said the applications will be treated as withdrawn for failure to file an appropriate statement of inventorship showing how the applicant derives the right to the invention.

Ethical arguments

The Applicant argued that there is a moral right to identify the inventor and simply naming an arbitrary person in place of the actual inventor would undermine the purpose of the concept of identifying the inventor. The hearing officer does not seem to have answered this point.

The Applicant argued that it is disadvantageous to withhold innovation from the public simply because patent protection would be refused due to the nature of the inventor. In reply the hearing office said “dissemination of innovation from an AI machine could occur freely in a number of ways such as via the Internet” and that decisions about dissemination were up to the owner or developers of the AI machine.

Comments

The UKIPO decision is encouraging because it calls for wider debate about the issue of AI machines which create inventions. It is a useful decision because it clearly sets out the arguments including the legal arguments and the ethical arguments.

In the present case one of the inventions concerns using a fractal pattern of embossing on the outside of a container. Groups of containers can be stuck together by pressing them together so that the fractal protrusions engage fractal dents in an adjacent container. It is clear how the invention works by inspecting the product without needing to read the patent specification. If the invention had instead been a new type of AI algorithm the situation is different as it is not clear how the invention works by observing its operation. In that case the published patent specification is useful to inform the public how the new AI algorithm works.

The decision states that decisions about dissemination of the innovation “will be down to the owner or developers of the AI machine” which is a statement acknowledging that the owner or developer of DABUS is the party with control of the inventions. In the present case the applicant has requested early publication so the technology will be disseminated to the public but in other cases, perhaps the technology will be retained as trade secrets?

There has been no challenge to the applicant’s assertion that DABUS is the inventor which is interesting in my view. There is an argument that AI technology in the present day is available as a tool only and is not capable of independently creating an invention.