21 Feb Can AI be an inventor?
The patent attorneys at Serjeants outline the latest decisions made by a number of different jurisdictions in regards to whether artificial intelligence (AI) can be an inventor, and explain what this may mean for the future of patent applications.
AI as an inventor
In a previous blog, we discussed the issue of whether robots can be inventors, highlighting a case in which creator Dr Stephen Thaler filed a patent application seeking to protect inventions that were invented by his AI machine, DABUS.
In most countries, it is essential that a natural person is named as an inventor in patent legislation. Thaler filed patent applications in various jurisdictions including Australia, UK, US, Europe, South Africa, and many others. In each of these applications, DABUS was named as the sole inventor, with no human inventor named.
The applications were filed as test cases to find out if patent applications can be granted without a human inventor being named. Each jurisdiction was required to decide whether to progress the patent application based on their own legislation. Decisions have now been made in a number of these countries with differing outcomes.
The Australian patent application was initially refused as it was decided that AI could not be named as an inventor in an Australian patent application. This decision was controversially overturned by the Federal Court on the basis that not allowing AI to be named as an inventor would preclude many otherwise patentable inventions from protection and there is nothing in the Australian Patents Act that prevents it. This means AI can be named as an inventor in Australian applications.
The UK patent application was refused after an initial refusal by the Hearing Officer at the UK Intellectual Property Office (UKIPO) was appealed by Dr Thaler, first to the Patents Court, and then to the Court of Appeal. The Court of Appeal’s decision argued that Section 7 of the UK Patents Act 1977 does require the inventor or inventors to be a person. There was some disagreement amongst the Court of Appeal judges as to whether the UK Patent Office was able to determine whether Dr Thaler was properly entitled to the application if the invention was created by AI, but the majority of the judges decided that they were able to make this determination. This means that the law in the UK remains that a natural person must be named as an inventor in a patent application and a person is not entitled to patent an invention created by AI.
The US patent application was refused by the United States Patent and Trademark Office (USPTO) on the basis that US patents law requires a natural person to be named as an inventor. This refusal was confirmed by a US District Court. The Court ruled that Dr Thaler’s argument to allow AI to be named as an inventor would require a change of law authorised by Congress.
The European patent application was initially refused by the formalities section on the basis that it was necessary to name a natural person as an inventor. This was appealed by Dr Thaler to the Legal Board of Appeal. On 21 December 2021, the Board confirmed the decision made by the formalities section and refused the application. This means that it remains necessary to name a natural person as an inventor in European patent applications.
The South African application was granted without significant objection. This is perhaps unsurprising, as South Africa is one of the few jurisdictions in the world that grants patents without substantial review of the contents of the applications.
The law on inventions generated by AI remains complicated and differs from country to country. Further decisions are expected on this matter in the near future and the possibility remains for countries to change their law to allow AI-generated inventions to be patented.
Are you working on an innovation involving AI?
If you require advice on an innovation that uses AI, or any other patent matter, the expert team of patent attorneys at Serjeants can help.
Please call 0116 233 2626 or send us an email here.