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24 September 2021PatentsMuireann Bolger

Has Justice Birss found a route for AI inventorship?

After a string of losses at the world’s top IP courts, it seemed as if the artificial intelligence  (AI) machine, “the device for the autonomous bootstrapping of unified sentience”—better known by its acronym, DABUS, had run out of road.

Launched two years ago, the goal of the much-publicised project is a lofty one: for the “creativity machine”, the brainchild of physicist Stephen Thayler, to be named as the sole inventor on a patent.

Accordingly, the DABUS team spearheaded by Ryan Abbott, professor at the University of Surrey, filed patent applications in multiple jurisdictions that listed the AI as the inventor of a food product and an emergency light.

If successful, the team would have revolutionised IP law but, barring some minor wins, the campaign had been gradually losing momentum. Until now.

To date, major IP global offices had rejected the applications—on the basis that all named inventors must be human. These decisions have been staunchly upheld by the US and UK courts, while celebrations following a favourable verdict from an Australian federal court have been muted by an impending appeal.

But while this week’s English Court of Appeal decision followed earlier court decisions, lawyers believe that Lord Justice Colin Birss’ dissent may have supercharged the entire project.

A 2:1 verdict

On the face of it, the legal status quo around AI inventorship remains.

As Robyn Trigg, knowledge lawyer at Osborne Clarke, explained: “Although AI is a hot topic, the decision largely focused on the legislative specifics and requirements for filing patent applications. All three Justices, Birss, Richard Arnold, and Elisabeth Laing, agreed that under the Patents Act 1977, an inventor must be a person, and as a machine is not a person it therefore cannot be an ‘inventor’.”

Even Birss wryly noted that the focus on AI inventorship in the parties’ notes rather than the formalities around patent applications, was an “object lesson in the risks of advocacy being distracted by glamour”.

But in his dissenting opinion, Birss diverged sharply from the views of Justices Arnold and Laing, by contending that: “The fact that the creator of the inventions in this case was a machine is no impediment to patents being granted to this applicant.”

According to Trigg, this dissent illustrates the burning questions surrounding the inventorship requirement, AI-produced inventions, and the lack of patent protection for such inventions.

“Birss noted that it was not obvious that anyone other than the applicant had a better right to the patents for these inventions. He preferred to interpret the requirements of the act in such a way that they could be met in circumstances where the creator of the invention is a machine and without requiring the applicant to prove the rule of law on which they rely to derive their entitlement to the rights,” she explained.

Unsurprisingly, the DABUS team has welcomed this unexpected development as a significant breakthrough. Commenting on Birss’ dissent, Abbott told WIPR: “While we would have preferred the appeal to have been allowed, we were very encouraged by the dissent of LJ Birss who agreed with us that ‘the creator of the inventions in this case was a machine is no impediment to patents being granted to this applicant…’ and he would have allowed the appeal. We respectfully believe this was the correct interpretation of the current state of UK law.”

An ‘unorthodox but compelling’ argument

But what ripple effects could the dissent send throughout the divisive debate waged around AI inventorship?

According to EIP partner David Brinck, Birss has presented an “unorthodox but strangely compelling” argument.

He explained: “Birss agrees that, as far as the UK Patents Act is concerned, an inventor must be a person. But he then says that the requirement to identify who is believed to be the inventor is satisfied by simply identifying an AI entity as inventor. This would mean that the UK Intellectual Property Office (IPO) need not be satisfied that the indication as to how the applicant had obtained the right to the invention is valid.”

Brinck believes that if Birss’ view had formed the majority opinion, this could have potentially paved the way for a framework under which inventions by AI entities could have been patented without a change in law.

Birss’ speculative arguments contrasted greatly with the plain no-nonsense language used by Arnold and Laing who gave short shrift to the suggestion of future reinterpretations of the Act that would permit AI inventorship.

At the heart of the contrasting opinions was the question of whether Thaler complied with the requirements of the Patents Act by identifying “no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS”.

Birss believed these requirements had been satisfied, while his fellow justices disagreed.

According to Marks & Clerk partner, Jonathan Solomon, these opinions highlighted a complex issue of statutory interpretation.

“Birss’ suggestion that the requirement to list an inventor is satisfied if the applicant had ‘genuine belief’ about who they listed as the inventor, and his interpretation that the 1977 Act does not provide the Comptroller with the power to determine entitlement to a patent, or provide an appealing basis to resolve issues of AI inventions without full scale legislative review,” he noted.

Crossed wires

For Bryan Wheelock, partner at Harness Dickey, the case presented an intriguing conundrum around Thaler’s right to claim ownership of the invention because he owns the inventor.

Ultimately, Lord Justice Arnold was correct when he concluded that the definition of “ownership” does not control “whether intangible property arising from tangible property is automatically owned by the owner of the tangible property”, he argued.

Wheelock added that Birss’ view of Thaler’s position was further undermined by Justice Laing’s pithy observation that Thaler failed to identify the “person” he believes the inventor to be—he identified the machine he believes the inventor to be.

“By Birss’ own construction of ‘inventor’, Thaler did not comply with the statute,” said Wheelock. ”While Lord Justice Birss was focused on the correct question, it seems he should have sided with the majority...ultimately the majority had it right.”

Others take a more cautious view of the split opinion and predict that it could be a harbinger of future upheavals in IP law. For Bristows partner Richard Pinckney, the vastly different conclusions in the judgment underscored the tangled path that lies ahead for an evolving area of law.

“I expect that this is not the last we will hear on the issue of whether a machine is entitled to be named as an inventor of a patent, whether this particular case goes to the Supreme Court or whether the legislature looks at this issue," he predicted.

Richard Johnson, chairperson and partner in the engineering team at Mewburn Ellis, goes further, insisting that Birss has showcased an “alternative universe”. In this scenario, he explained, patent applications naming AI systems as inventors can pass through the IPO but may be vulnerable to later attacks on the grounds of entitlement.

“In this universe, the battleground for AI-generated inventions would be focused on who is entitled to own an invention rather than the nature of the inventor,” he said.

“It shows perhaps that there might be a path that enables the contribution of AI to be recognised, and indeed suggests the possibility that the existing rules on patent entitlement may provide a framework to ensure that AI-generated inventions end up with the correct ownership.”

A new horizon?

While opinions on what the future holds for this controversial area of law vary greatly, all IP lawyers agree on one certainty: change is afoot.

As Siddharth Kusumakar, partner of Powell Gilbert, noted: “AI is a fast-evolving field, and whether the law should be revised to accommodate developments is currently under consultation, both at the IPO and the World Intellectual Property office. Legislative reform to address the issue of patenting AI-generated inventions may be on the horizon.”

Elsewhere, Diego Black, partner and patent attorney at Withers & Rogers, said that while the decision emerged as expected, research scientists and innovators are confident that there is now ground for legislative change in this area.

“As systems continue to develop, and the need for human input diminishes, the criteria for assessing inventorship will need to be reassessed to take into account the greater role the machine plays in the invention process, ” he explained.

This week’s decision may have drawn a line under Thaler’s appeal but the splintered judgment, and the compelling nature of Judge Birss’ dissent, will give those calling for reform cause for optimism.

“While Birss’ views have not won out today, they do present a significant and notable dissent which may be drawn on in the future should similar cases reach the Court of Appeal or Supreme Court,” said Ed White, head of analytics, IP Group at Clarivate.

“Legal change takes time. But some form of change does still seem to be inevitable with the reality being that AI has fundamentally, and permanently, disrupted the invention process playing an ever more central role in product design and development,” he concluded.

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