Date: 5 August 2021
Artificial Intelligence (AI) is a very interesting topic and has led to many interesting movies anticipating devastating and intimidating consequences, such as “The Matrix” The Matrix - Wikipedia and the “Next” series Next (2020 TV series) - Wikipedia
AI, while not yet as omnipotent as described in these fictional representations, is already capable of originating inventions, thus factually behaving and producing results like a human inventor.
While artificial intelligence devices may be object of patent applications and patents, until now, patent offices have been reluctant to acknowledge an AI as an inventor of a patent or patent application publication. A human inventor was thought to be the only option to be designated as inventor.
In one case, a family of patent applications, the patent applicant stated that an invention of a stackable beverage container was invented by an AI name DABUS (an acronym for “Device for the Autonomous Bootstrapping of Unified Science”). This did not meet with enthusiastic consent by patent offices.
For example, the EPO has not acknowledged AI to be capable of being an inventor.
See our article on this topic here: EPO deprives Artificial Intelligence of IP rights?
Since the AI (called DABUS) that had devised the invention is not a natural person, it is thus not regarded by the EPO as entitled to being acknowledged as an inventor. Currently, an appeal against the negative decision is pending, however, the Board of Appeal has already issued preliminary communications according to which an inventor would have to be the subject of rights and duties. The decision has not yet been made and oral proceedings are scheduled for December 21st, 2021.
See more detail about this case here: Register Plus
In Germany, two parallel applications (10 2019 128 120 and 10 2019 129 136) filed independently of the European applications were also refused.
In the USA, an appeal is currently pending after a rejection of a corresponding application in 2020, the ruling has not yet been issued, but the judge seems to have been sceptical so far.
In the UK, an application with the AI inventor DABUS was also refused.
However, most recently, different results have emerged in two patent legislations, allowing the designation of the AI DABUS as inventor.
The Federal Court of Australia decided on 30 July 2021, in Thaler v Commissioner of Patents  FCA 879 (30 July 2021), that a patent application which was declared “lapsed” by the Deputy Commissioner of the Australian Patent Office, this lapse is not valid. The office stated that “it is a fallacy to argue … that an inventor can only be a human. An inventor may be an artificial intelligence system, but in such a circumstance could not be the owner, controller or patentee of the patentable invention.” (under 12. in the cited decision).
See the decision here: Thaler v Commissioner of Patents
Shortly before this decision, the South African Patent Office even granted a patent with the same artificial inventor, DABUS, as designated inventor – actually the first patent granted that recognizes an AI as the inventor. It is to be noted here that the South African Patent Office grants patent applications without material examination e.g. on novelty and inventive step, in fact rather resulting in a registration of the patent. Maybe the grant is not the last word here if there should exist a possibility to challenge the validity of the designation of an AI as inventor.
Read more on this case here: South Africa Grants World’s First Patent for AI Inventor
The owner of the patent applications on the invention made by DABUS had filed a PCT application – (WO 2020/079499 A1, see the Original Doument on Espacenet). By means of this international application, the owner of the patent family (Stephen Thaler, Missouri, US) apparently has been able to achieve the grant due to legal provisions in South Africa that do not allow to ignore a designation of the AI inventor on the basis of the International PCT application. The WIPO as receiving office of the application apparently had no legal basis to challenge the designation of the AI DABUS as inventor.
Possibly Rule 51bis.2 of the Regulations under the PCT plays a role here which states:
“The designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
(i) relating to the identity of the inventor (Rule 51bis.1(a)(i)) (other than a document containing an oath or declaration of inventorship (Rule 51bis.1(a)(iv)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request or if a declaration as to the identity of the inventor, in accordance with Rule 4.17(i), is contained in the request or is submitted directly to the designated Office ….
(iv) containing an oath or declaration of inventorship (Rule 51bis.1(a)(iv)), if a declaration of inventorship, in accordance with Rule 4.17(iv), is contained in the request or is submitted directly to the designated Office.”
The future development will remain exciting. We will report any new developments.
Our attorneys can give you advice on how to protect, on the one hand, AI related inventions and, on the other hand, inventions invented by an AI!
See our page for more information in this area: Artificial Intelligence