Artificial Intelligence (AI) is nowadays ubiquitous in our everyday life, and increasingly plays a key role in innovation. For example, AI has been successfully used to discover new blends to form metallic glass that is lighter and stronger than steel, and new polymers with high thermal conductivity. Evolutionary algorithms are used by NASA to design evolved antennas for mission-critical applications involving stringent, conflicting, or unusual design requirements. The AI system Philyra creates perfumes by combining fragrances in ways never considered by human perfumers.

AI systems seem intelligent, as they can do at least some of what humans can, and to a degree autonomous. Inventions made by using AI systems may be the result of a human-AI interaction, in which the human identifies a problem and the AI finds a solution, or may be entirely AI-made, i.e. AI identifies a problem and a solution thereto.

From an Intellectual Property (IP) point of view, it is thus reasonable and, indeed, mandatory, to ask whether an AI system may be an inventor. This may not appear to be an urgent question but it has been already addressed by the European Patent Office (EPO). On December 20, 2019 the EPO published on its website a concise statement marking a milestone in the IP world:

„After hearing the arguments of the applicant in non-public oral proceedings on 25 November, the EPO refused EP 18 275 163 and EP 18 275 174 on the grounds that they do not meet the requirement of the EPC that an inventor designated in the application has to be a human being, not a machine“

The refused European patent applications designed as inventor DABUS, a type of connectionist AI. The decision of the Receiving Section of the EPO appears to be in line with its preliminary opinion, according to which several evidences indicate that the designated inventor shall be a natural person:

 

The decision of the EPO does not come as a surprise to an attentive follower of the lengthy and thorough discussions that the EPO is promoting and conducting on this topic. In October 2018, the EPO hosted the IP5 expert round table on artificial intelligence to discuss the impact of AI in the IP sector:

Although the outcome of the IP5 round table does not necessarily reflect any policy statement of the IP5 Offices, it clearly shows that the discussion highlighted a general tendency to require the inventor to be a human being.

The EPO’s attempt to develop a common understanding of AI-related issues is not limited to the ongoing discussions with the other four members of the IP5. In the fall of 2018, the EPO invited the EPC contracting states, that is the EPO members states, to provide information on their practice when dealing with AI-related IP issues and inventions:

 

As far as inventorship is concerned, the input provided by the EPC contracting states is in line with the findings of the IP5 expert round table and indicates that the designated inventor should be a natural person.

A detailed analysis of inventorship in inventions involving AI can be found in a study commissioned by the EPO and authored by Dr. Noam Shemtov:

According to the study, at least at present, a European patent application designating an AI system as an inventor is likely to be refused. In the report prepared by Dr. Shemtov, it is also submitted that the current legal framework is suitable for dealing with inventions involving AI systems both at present and in the foreseeable future.

Dr. Shemtov’s study addresses, among others, two interesting questions regarding the inventor status and how the concept of inventor should be applied in the European prosecution:

Thus, interestingly, the study does not appear to indicate any tension between the current legal framework and use of AI system in inventive activities, and it does not encourage the EPO to take bold actions such as broadening the definition of the inventor to include AI systems.

To summarise, the decision of the EPO is in line with the currently dominant opinion concerning inventorship and ownership. In this regard it would be desirable if the Applicant were to appeal the decision, so that the public can receive the Board of Appeal’s further clarification of these issues.

Moreover, this decision may, in the long run, render the patent system unfit for its purpose, by preventing protection of what may become the majority of new innovations, namely AI-made inventions. In the short term, however, applicants may attempt to circumvent this limitation by designating a human being as inventor – a ruse that, if exposed, is likely to lead to patent revocation under national law according to A.138(e) EPC.

However, even if the patent system becomes obsolete, its fundamental objectives will not. In the words of WIPO’s draft issues paper on intellectual property policy and artificial intelligence,

 

„A fundamental objective of the patent system is to encourage the investment of human and financial resources and the taking of risk in generating inventions that may contribute positively to the welfare of society.“

Hence, it may become necessary to introduce an alternative system of IP specifically designed for and limited to AI-made inventions. Conceivably, such an IP system would aim to protect the financial investments of the applicant, e.g. of the proprietor of the AI creating the invention, bypassing any issues related to inventorship rights.

Dr. Edoardo Mirabella

Europäischer Patentanwalt

Dr. Andrew J. Morton

Australischer Patentanwalt und Australischer Marken- und Designanwalt