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How do we afford patent protection when novel ideas are created by artificial intelligence?

16 August 2019

It was recently reported by the BBC that researchers at the Artificial Inventor Project (a project group seeking intellectual property rights for the autonomous output of Artificial Intelligence (AI) have filed patent applications listing an AI system as an inventor (as opposed to, or in addition to, a human inventor).

The AI system in question, DABUS is a creativity machine which generates novel ideas without human intervention. It created two products: a beverage container and a device for attracting attention in search and rescue operations. Had its inventions been created by a human, that human would be listed as the inventor. However, patent offices around the world do not currently recognise AI machines as inventors leading to concerns regarding the patentability of AI inventions. This article considers such concerns and discusses potential solutions to ensure that AI inventions are afforded patent protection.

What is the Problem with AI Inventorship?

The problem with AI inventorship is its link with ownership. The default position (other than for employees) in the UK (as with most other jurisdictions) is that the inventor (or joint inventor) of an invention for which patent protection is sought will own any patent that is granted.[1] This poses problems for listing AI as patent inventors: machines are not legal or natural persons and cannot own property. Indeed, without a radical shake-up of how the law views legal personality, it is impractical to propose that AI can hold ownership rights in intellectual property: AI has no standing and cannot commercialise or protect its rights. To be useful and effective, the rights in the intellectual property need to vest elsewhere.   

In the absence of recognising AI systems as inventors, Ryan Abbott (Artificial Inventor Project) expressed concerns that the ideas generated by such machines will not be assigned patent protection and that this will ultimately stifle innovation in various industries. As technology continues to develop and AI becomes more advanced, it is likely that innovators will become more reliant on AI to help develop new inventions and, therefore, a solution to ensure patent protection is afforded to AI inventions is required to continue to incentivise research and development.

Is There A Solution To The AI Inventorship Problem?

The following proposed solutions offer methods of affording patent protection to AI inventions while ensuring that somebody is assigned patent ownership:

  • allowing AI inventorship but creating a regime that vests ownership in a human;
  • allowing joint AI inventorship with ownership vesting in a human co-inventor; or
  • allowing non-inventive humans to be listed as patent inventors (in lieu of AI inventorship).
AI Inventors with Ownership Vesting In A Human

The first potential solution to the AI inventorship problem is to allow AI to be listed as an inventor but to implement a regime which vests ownership of such inventions in a human.

It is not uncommon in UK patent law for non-inventors to own IP: statute provides that in certain circumstances employee inventions are owned by employers.[2] A similar regime could be introduced in the context of AI inventorship: where AI is listed as a patent inventor, ownership vests elsewhere. Ownership could vest in the individual that: owns the AI; coded the AI; operates the AI; invented the AI; trained the AI; or first recognised the idea as inventive.

The implementation of a regime vesting AI inventions elsewhere would be simpler than the equivalent regime for employees as there are no concerns about compensation and no disputes regarding whether an invention was created in the course of employment. However, AI inventorship may give rise to more situations in which employee rights are concerned: if an employee codes or operates the AI machine in the course of employment, existing rules may apply.

AI and Human Joint inventorship

The second potential solution is to allow joint AI inventorship with a human. The potential joint inventor could include any of the same individuals listed above as a potential owner. The AI inventorship problem is resolved because the joint inventor can take ownership of the granted patent.

The Patent Act describes ‘inventor’ as the actual deviser of the invention[3]. If a machine has devised the invention then technically no human is eligible to be an inventor. Therefore, in order to implement this solution the legislative regime must change to permit non-inventive joint inventors when AI has generated the invention. It would also mean ignoring the joint ownership that would usually be accord to a joint inventor but could not be held by a machine.

Moreover, the Artificial Inventor Project suggest that failing to acknowledge the inventorship of AI in favour of a human diminishes the achievements of persons involved in other inventive activities and listed as inventors on non-AI patents. This concern will apply to joint ownership, however, joint inventors could be marked with an asterisk on patents to indicate that the inventive process was completed by AI.

Non-inventive human inventorship

The third potential solution is to implement a regime to allow a human to be listed as the sole inventor, without contributing to the inventive process, instead of listing the AI machine at all.

Similar considerations and concerns apply to this solution as discussed for the second potential solution: humans may not have contributed to the invention and it may diminish the achievements of other inventors. However, this solution remains easier to implement when compared to the second solution as it does not require a change in the legal position to permit inventorship of AI.

Conclusion

Although each of these solutions would require legislative changes, they would each ensure the patentability of AI inventions and potentially resolve the AI inventorship problem. The first solution, of according inventorship in the AI system but assigning ownership to a human or corporate personality, would appear to be the most legally rigorous and fits in best with existing regimes. However, it remains to be seen how the law will adapt to this emerging issue.

As we see more reliance on AI machines such as DABUS, we also need to consider the growing threat and added complication of litigating AI inventions, which will be discussed in a later article.



[1] S7 Patents Act 1977
[2] S39 Patents Act 1977
[3] S7(3) Patents Act 1977

Authors

Jonathan Solomon

Jonathan Solomon Associate London (UK) Solicitor (UK)

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