AI-generated invention – implications for IP

November 2021  |  FEATURE | INTELLECTUAL PROPERTY

Financier Worldwide Magazine

November 2021 Issue

The invention, management and protection of intellectual property (IP) is a critical issue for many companies. But while ‘invention’ has long been confined to human employees, this has begun to change in recent years with the growth of artificial intelligence (AI). The more AI simulates human mental activities and performs innovative tasks by itself, the more it might be considered capable of creating or inventing.

In a landmark decision that could steer the course of IP laws everywhere, in July 2021 officials in South Africa awarded a patent to an invention made by an AI system.

The patent, for a food container based on fractal geometry, was designed and created by an AI system called ‘device for the autonomous bootstrapping of unified sentience’ (DABUS). An international team of lawyers and researchers led by Ryan Abbott, Professor of Law and Health Sciences at the University of Surrey, filed the patent.

South Africa’s decision to grant the patent goes against a 2020 judgement of the High Court of England and Wales in the DABUS case, which stated that an AI machine cannot be construed as an inventor within the meaning of the Patents Act 1977.

The European Patent Office (EPO) and the US Patent and Trademark Office (PTO) also rejected an attempt by Dr Stephen Taylor to legitimately register his AI creation, DABUS, as the inventor for the purposes of two patents.

Indeed, according to the ‘Report from the IP5 expert round table on artificial intelligence’, published on 31 October 2018, the world’s five major global IP offices reached an agreement that although it is difficult to determine whether a particular invention is made by a human or a machine, the inventor designated in a patent application should be a natural person.

The South African decision may therefore be seen as a watershed moment, heralding a changing attitude toward AI-generated inventions. That said, in September, the UK Court of Appeal ruled that only a person can be an inventor, and that since Stephen Thaler accepts that he is not the inventor, he has no entitlement to the patent. In his appeal, Mr Thaler asked the Court of Appeal whether the Patents Act does in fact require an inventor to be a person, what the purpose of section 13 of the Act is for and how it works, and what the right response is to the information he had provided under section 13(2) of the Act.

Reassessing frameworks

Speaking about the South African ruling, professor Adrian Hilton, director of the Institute for People-Centred AI at the University of Surrey, said: “This is a truly historic case that recognises the need to change how we attribute invention. We are moving from an age in which invention was the preserve of people to an era where machines are capable of realising the inventive step, unleashing the potential of AI-generated inventions for the benefit of society.”

AI is becoming more pervasive in our daily lives. Not only does it provide contextual data through our smart devices and fulfil other practical uses, it is also increasingly used for endeavours that were previously exclusive to humans. This further complicates the status of AI as merely a tool, particularly in the workplace.

When an employee creates a piece of work, the copyright is typically owned by the employer. But AI does not fit comfortably within this conceptual framework as it cannot be considered an employee. Equally, a human employee who trains the AI system is unlikely to be considered the author or creator of works. Unravelling these issues will be key to the future of AI-generated invention.

Allowing AI to own IP has consequences for enforcement and infringement of IP. If AI has sufficient legal personality to own IP, does this mean it must also be able to bring infringement proceedings, be sued for infringement, enter legal contracts and in all other ways be treated as a human for legal purposes? With the expanding capabilities of AI, such questions must be handled within a suitable legal framework.

Future of IP law

As the application and deployment of AI continues to develop, AI-generated invention will become more common, with implications for IP law globally. Long-established concepts such as authorship, legal personality and entitlement will be tested.

Back in September 2020, the UK Intellectual Property Office (IPO) called for views on the position of AI within UK patent law. The questions posed outline differing perspectives that need to be considered in view of the law’s development, particularly around the issue of when AI ceases to be merely a tool for our inventions, and instead begins to be seen as a separate entity creating new inventions independently. In July 2021, the UK announced its New Innovation Strategy which will explore the potential of AI-generated invention.

In the US, under the America Invents Act (AIA), Congress has defined an “inventor” as “the individual, or if a joint invention, the individuals, collectively, who invented or discovered the subject matter of the invention”. As clarified by the Federal Circuit, an “inventor” is one who contributes to the “conception” of the complete and operational invention.

The Court of Appeal ruling in the UK was significant, though, as there was a two to three split among the ruling judges. The UK Supreme Court is likely to be asked to consider the issue. As such, the question of AI-generated invention is yet to be definitively resolved.

As AI advances, legislation may struggle to keep pace. Lawmakers will need to grapple with fundamental questions around the nature of innovation, and decide how far and how quickly they want to adapt.

© Financier Worldwide

BY

Richard Summerfield