In Marks & Clerk’s latest AI Report 2024, we consider the use of AI in creating a product design, which may be the subject of a Registered Design. However, even if the AI-generated output itself meets the requirements for being registered as a design, the question remains as to who may qualify as the owner of the design.
In relation to patents, decisions on AI inventorship have been passed down from the Supreme Court of the United States, the European Patent Office Board of Appeal, and the UK Supreme Court. If AI-generated technical advances cannot be patented, what rights remain available to protect these works? We aim to explore the various rights that may still be available for AI-generated works: how inventions that build on AI-generated works can be protected; what can be protected by Registered and Unregistered Design Rights; and how the law differs in the UK, EU and USA.
In the judgement from the UK Supreme Court it was concluded that Dr Stephen Thaler’s artificial intelligence system DABUS could not be named as an inventor on a patent application as it is not a person, but a machine. Accordingly, Dr Thaler cannot be named as the successor in title or assignee of the patent application, as in both cases those rights are passed from the inventor to the applicant. Applications naming DABUS as the inventor were filed by the Artificial Inventor Project in seventeen countries. In 2021, a patent was granted in South Africa with DABUS named as an inventor. However, it is important to note that in contrast to the UK, Europe and the USA, South Africa does not examine patents before grant. Although Dr Thaler holds the patent for now, there is a possibility it may be revoked at any point in the future if it is found that he was not entitled to the grant of the patent.
The UK, EPO and US decisions all centre on the same key points. Can an artificial intelligence be an inventor for a patent? If there is no inventor, can anyone validly apply to patent that work? Lord Kitchin of the UK Supreme Court notes that the fractal container and neural flare in question are technical advances generated by an artificial intelligence – not inventions devised by an inventor. The judgement of the UK Supreme Court also suggests that if Dr Thaler named himself as the inventor, using DABUS as a highly sophisticated tool, the decision may have been different.
In the UK, a patent may be granted to the inventors or their successors in title. The UK Supreme Court decision does not introduce a new ground for refusing patent applications: instead, the applications were deemed withdrawn for failure to validly name an inventor within the sixteen-month time limit after filing the application. Inventors who build on AI-generated technical advances, for example by: using AI-enabled design software, incorporating AI-generated components into their own new inventions, or devising new manufacturing methods for AI-generated devices, could conceivably be named as inventors and valid patents potentially obtained.
According to the EPO Legal Board of Appeal, there is no “case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law.” In the US, an AI system may not be listed as a joint inventor. However, the user of the AI system, the person named as the inventor, must fulfil the requirements of the Pannu v. Iolab Corp. test, in that they must contribute in some significant manner to the conception or reduction to practice of the invention.
Dr Thaler is the creator and owner of DABUS. Therefore, there was no question that he would qualify as the “user or the owner” as described by the EPO. But who qualifies as the inventor when the user does not own, or did not create the AI system, such as with commercially available AI-enabled tools? In the UK, the answer may be similar to provisions for computer-generated copyright and designs being: “the person by whom the arrangements necessary for the creation of the work are undertaken.” However, it has yet to be determined whether this person is the user of an AI system who provides a prompt for the work or the person responsible for creating or training the AI system in the first place.
While both Registered and Unregistered Design Rights are available in the UK, they each have very different requirements. For example, Registered Design Rights can protect the surface ornamentation of a product, or part of a product, but cannot protect features dictated solely by technical function. Similar to a patent, Registered Designs afford monopoly rights over a design.
By contrast, UK Unregistered Design Right (UDR) cannot protect surface decoration but can protect features of shape and configuration. As such, it can protect technical features, for example features which are not visible during normal use. The bar for subsistence is that an Unregistered Design must be original, which is a significantly lower threshold than for both patents and Registered Design Rights. Unregistered Design Right does not protect against independent genesis, only against copying. The proprietor of UK Unregistered Design Right is not necessarily the designer, or their employer, but can be the first marketer of “articles made to the design” in a qualifying country: the UK, New Zealand, or Hong Kong. If the design is first made available for sale outside of a qualifying country, or none of the designer, their employer, or the first marketer are a “qualifying person,” no Unregistered Design Right subsists. A qualifying person means:
- an individual habitually resident in a qualifying country, or
- a body corporate or other body having legal personality which—
- is formed under the law of a part of the United Kingdom or another qualifying country, and
- has in any qualifying country a place of business at which substantial business activity is carried on.
The Copyright, Designs and Patents Act 1988 came into force in August 1989. Section 220, which refers to qualification by reference to first marketing, was amended in line with the Intellectual Property Act 2014. Before the 2014 amendment, the qualifying person was required to be “exclusively authorised to put such articles on the market in the United Kingdom,” where exclusive authorisation was given “by the person who would have been first owner of Design Right as designer, commissioner of the design or employer of the designer if he had been a qualifying person, or by a person lawfully claiming under such a person.”
As the law currently stands, there is no requirement in the UK for the first marketer to be authorised by a person. There is also no link required between the actual “designer” and the first marketer, although the designer and their employer must not be qualifying persons in order for the right to reside with the first marketer. As such, at least in principle, it appears that an AI-Generated design could qualify for UK Unregistered Design Right if the first marketing of articles made to the design takes place in a qualifying country and the first marketer meets the requirements for a qualifying person. In which case, a UK user of an AI tool, created by persons outside of the UK, could qualify for UK UDR by first marketing an AI-generated design, even if the user themselves is not considered to be “the person by whom the arrangements necessary for the creation of the work are undertaken”.
Unregistered Community Designs (UCD) in Europe (and the post-Brexit UK equivalent right of Supplementary Unregistered Design Right) are different from the UK UDR discussed above, both in terms of what can be protected and in terms of ownership. In fact, Unregistered Community Designs have similar requirements to Registered Community Designs and, in both cases, the right belongs to the designer or their successor in title or employer. Thus, it follows that an AI-generated design, without having a person as a designer, would not qualify as Unregistered or Registered Community Designs in Europe.
In the US, there are no specific provisions for Unregistered Design Rights. Registered Designs, known as design patents, are used to protect the visual ornamental characteristics of a product. Design patents may be granted to any person who has invented any new, original and ornamental design for an article of manufacture. Thus, it follows that an AI-generated design, without having a person as an inventor, would not qualify for US Design Patent protection.
In conclusion, while both Registered and Unregistered Design Rights in the UK may afford some form of protection for AI-generated works, each case has its limitations and it remains to be seen as to whether reform will be required to provide sufficient protection for AI-generated works in the future.
