Can artificial intelligence be the inventor of resultant patents? DABUS decision (J 8/20)

 The Legal Board of Appeal of the European Patent Office, in its decision J 8/20, published with reasons in July this year, confirmed that only a natural person can obtain a patent. Simultaneously, the Board pointed out that inventions made by artificial intelligence systems, are not excluded from patentability under the 1973 European Patent Convention.

The described case of applications for inventions "invented by AI" is part of a broad debate on the need for legal regulation of the operation of artificial intelligence systems. It seems that by design, it served to test the flexibility of the limits of the patent system and to trigger a discussion on the need to reform the system in view of the upcoming next technological revolution.

DABUS and his „inventions”

DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) is an artificial intelligence system created to "generate inventions" by American inventor Stephen Thaler. The case involved two patent applications filed with the European Patent Office by the DABUS inventor in 2018.

The first solution referred to the "Food Container" (EP 18 275 163 - a drawing from the patent document is shown below), having, according to the invention, a wall with a profile that provides a series of fractal elements that form indentations and bulges. This allows multiple containers to be tightly connected by interlocking their indentations and bulges, and also improves wall adhesion, as well as the flow of heat into and out of the container.

The second solution concerned a "Devices and Methods for Attracting Enhanced Attention" (EP 18 275 174 - a drawing from the patent document is shown below) and, in a nutshell, included, i.a. a device that emits light that flickers in a rhythm that mimics the neural activity of the human brain.

In both applications, the DABUS artificial intelligence system was named as the sole inventor of the inventions.

Proceedings before the European Patent Office

The European Patent Office (hereinafter: "EPO") rejected both applications for failure to meet formal requirements, i.e. failure to establish the applicant's right to the inventions.

Following a complaint against the decision, the Legal Board of Appeal of the EPO (hereinafter: "the Board") conducted further legal analysis of the issue. It first referred to Article 81 of the 1973 European Patent Convention (hereinafter: the "Convention"), establishing requirements that:

• the patent application shall identify the inventor,
• and, if the applicant is not the inventor or is not the sole inventor, shall include a statement specifying the source of acquisition of the right to a European patent.

Thus, as a key issue, the Board determined the examination of whether DABUS, can be designated in the patent application as the inventor of the invention. In addition, as part of the applicant's auxiliary request, the Board addressed the issue of the transfer of rights to an invention "invented" by artificial intelligence to the patent applicant.

Can a machine (artificial intelligence) be an inventor?

To such a question, the Board answered negatively.

In its reasoning, it indicated that the purpose of the provisions relating to the inventor and its identification in the patent application is primarily to grant and protect the rights of the inventor, as well as to facilitate the enforcement of possible claims for damages under domestic law and to determine the legal basis for entitlement to the application. If a machine is identified as the inventor, none of these objectives will be achieved.

Moreover, according to the Board, the fact that artificial intelligence cannot be an inventor is already apparent from the dictionary definition of the term "inventor", which refers to a person, not a machine (e.g., Oxford Dictionary of English: "a person who invented a particular process or device or who invents things as an occupation"; Collins Dictionary of the English: "a person who invents, esp. as a profession").

The Board rejected the applicant's arguments regarding the public's right to know who the inventor is and how the invention was made. According to the Board, it is the inventor who is the holder of the right to disclose his or her name, and a third party has no special rights in this regard. Moreover, the Convention does not require the EPO to create an opportunity for applicants to name machines as the inventor. Instead, if the applicant would like to satisfy the principles of fairness and indicate the contribution of the machine to the invention, the Convention does not prohibit such information from being provided as part of the description of the invention.

Thus, while there is no doubt that the DABUS system can participate in the creation of inventions that may be patentable, it cannot be considered an inventor under the Convention.

Can the owner of the AI system be its legal successor?

Despite the rejection of the European patent application on the grounds that the machine could not be considered an inventor, the Board addressed the applicant's auxiliary request and addressed the question of whether the applicant could be considered a legal successor to the DABUS system.

The appellant argued that in a situation where the application does not concern a man-made invention, the requirement to identify the inventor[1] in the European patent application would not apply at all. The Board, agreeing with this argument on a formal level - stated that when the applicant is not the inventor of the invention, it is still necessary for the applicant to submit a statement indicating the source of his/her right to apply for the patent[2]. Such a statement may indicate that the applicant is the employer or successor in title of the inventor[3].

The Board stated that this requirement updates regardless of whether the invention was made by a human or artificial intelligence. In order to demonstrate Stephen Thaler's right to file an application for an invention in which he is not named as the inventor, a statement that he is the owner or creator of the DABUS machine is not sufficient. Indeed, this does not, in the Board's view, "refer to a legal situation or transaction" that would make him a successor in title of the inventor within the meaning of the Convention.

AI inventions are not excluded from patentability under the Convention

In conclusion, the Board found that:

• as a general rule, inventions made using an artificial intelligence system are not excluded from patentability under the Convention;
• AI system cannot be designated as the inventor, the inventor can only be the natural person;
• it is permissible to indicate as the inventor the user or owner of the system with the help of which the invention was made;
• the right to a European patent is vested in the inventor, his employer, or his successor in title; if the applicant is not the inventor, he/she must show how he/she obtained the right from the inventor.

In addition, the Board pointed out that the Convention gives the possibility to provide in the application information about the role of artificial intelligence in the creation of the invention.

DABUS as an “inventor” in the world

The Board's decision is consistent with decisions made against analogous patent applications filed in the UK, US, Germany or New Zealand.

The exception to this is South Africa, where the Companies and Intellectual Property Commission became the first patent office in the world to grant a patent naming artificial intelligence as the inventor. It should be noted, however, that South Africa does not conduct substantive examination of patent applications the way the EPO and patent offices in the countries indicated above do.

The Federal Court of Australia also took a different view in a 2021 decision, stating that none of the provisions of the Australian Patent Act preclude the inventor from being an AI device. However, the decision was overturned in April this year by the full Federal Court of Australia. Then, the judges stated, i.a. that "the source of the authority to grant the patent lies in human endeavor." Following the applicant's request, the case was also considered by the High Court of Australia on November 11 of this year. After hearing oral arguments, the High Court rejected the applicant's request. Thus, ultimately, also in Australia, it was ruled that AI cannot be named as an inventor in a patent application.

The above rulings demonstrate that patent systems in their current form - explicitly based on the concept of human creativity - are not ready to consider artificial intelligence as the inventor.

What the future might hold?

As technology evolves, the debate on the creations of artificial intelligence will gain in importance. The various components of the coming (ongoing) technological revolution (blockchain, metaverse, AI) have already been discussed, and the subjects that will inevitably have to be addressed by legislation have been identified.

The DABUS invention case has sparked discussions in patent offices and courts around the world, also provoking a wider public debate. A similar discussion has been going on for a long time on the ground of copyright law, which has already led to the development of the first legislative solutions. For example, in the United Kingdom, "works" generated solely by AI have been given a special form of protection under copyright law.

From the perspective of patent law, by contrast, one cannot turn a blind eye to a problem that concerns a central issue for the invention protection system. The issue is to provide protection for inventions in such a way as to ensure the fulfillment of the fundamental purpose of patent law, i.e. to promote innovation by providing protection for investments in research and development. An incentive for creativity will not be required by an artificial intelligence system (at least as long as it lacks self-awareness), but it is needed by those who create, own or use AI systems to pursue invention.

The current discussion concerns securing rights to obtain patent protection for inventions created by AI systems. In this context, the EPO's decision is not objectionable with regard to inventions created using AI systems as support for the invention process. In such a case, AI is merely a tool in the hands of humans. The DABUS decision confirms that, in the EPO's view, the Convention, provides opportunities to effectively secure rights to inventions developed in this way, and the system of legal protection in this regard does not require changes.

But what about the situation in which it is the machine, with only some input from the "human factor," that comes to an innovative solution? In such a situation, who would be the inventor, who will be assured the right to file an application for invention? Will it be the person who creates the AI algorithm, or the person who poses the technical problem to be solved and provides ideas for its solution by the machine, or perhaps the person who optimizes the data for reprocessing by the AI? What if neither of these individuals can be credited with sufficient creative contribution to the invention to be considered an inventor? For such cases, patent law, which is based on standards that assume human creative activity, does not yet seem to be prepared.

[1] First sentence of Article 81, of the Convention

[2] Second sentence of Article 81, of the Convention

[3] Article 81 in conjunction with Article 60(1) of the Convention

Authors of publications: Małgorzata Czajkowska, Norbert Walasek