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2 August 2019PatentsRory O'Neill

Researchers file patents with AI as sole inventor

A team at the  University of Surrey in the UK is seeking a major shakeup in patent law after it filed patent applications in multiple jurisdictions which list an AI application as the sole inventor.

The machine, called Dabus, is said to have designed a type of plastic food container and a flashing beacon light.

A team of researchers has now asked the  European Patent Office (EPO),  US Patent and Trademark Office, and the  UK Intellectual Property Office (IPO) to grant protection to patent applications listing Dabus as the sole inventor of the new technologies.

Ryan Abbott, professor of law and health sciences at the University of Surrey, led the team behind the patent applications.

Speaking to WIPR, Abbott said the move was “unprecedented” and that patent offices had “no rules for handling something like this”.

The goal, he said, was to “raise awareness and effect change” in patent law.

According to Abbott, the patent system would benefit from a shakeup which would allow AI applications to be listed as sole inventors.

Such a change in the law would prevent people from taking credit for the work of machines, he said, noting that this was more unfair to other humans who developed the AI rather than the machines themselves.

This could become a particularly thorny issue where multiple human actors are involved in creating or operating the AI, he said. Choosing a human inventor out of the many collaborators could prove difficult.

“Depending on the person you list, this could change ownership, depending on what organization they're working for or whether they've assigned their rights, particularly if you now have a large number of inventors,” Abbott said.

Balvinder Matharu, partner at  HGF in London, told WIPR that “if there are inventors from different parties, it’s important at the outset that the flow of IP rights and IP ownership is clear, particularly as results can be generated very quickly and the scope of work plans are changing constantly”.

According to Matharu, the case highlighted important questions surrounding AI and inventorship. For example, he suggested, if an algorithm presents an effective idea that results in a patentable solution, it is not clear who should be listed as the inventor.

“If the route was not obvious to the scientist and he/she cannot explain why the AI system suggested it then is it correct to name the scientist as the inventor?”, he said.

“There is no question that you have a commercially viable product that was designed without a human inventorship,” Abbott said of Dabus’ inventions.

Abbott said that his team had informal discussions with various patent offices around the world over the past year. Some, he said, indicated that they were likely to reject any attempt to list AI as a sole inventor, while “others said they would be more open to it”.

He also confirmed to WIPR that his team intended to file an application under the Patent Cooperation Treaty this week.

The University of Surrey team expects it will be a long process, he said, involving “some early rejections” and potentially appeals.

“Ultimately it’s something that legislators will need to think about,” he said.

In a statement sent to WIPR, the EPO said that it could not comment on pending patent applications.

Commenting more generally on the issue of AI inventorship, however, the EPO said it was the “global consensus that an inventor can only be a person who makes a contribution to the invention’s conception in the form of devising an idea or a plan in the mind”.

The purpose of the patent system, the EPO said, was to incentivise innovation and afford rights to protect an inventor’s work.

“These rights are tailored for natural persons, i.e. humans,” the EPO said.

“Any change to [this] notion of inventorship would touch these basic principles underlying international and European patent law,” it added.

Gwilym Roberts, partner at  Kilburn & Strode in London, told WIPR that “at present, the patent offices are not keen to change the status quo”.

The debate was primarily one about administrative processes at patent offices, Roberts explained.

“AI isn’t going to get chippy if it isn’t named as inventor, just like it isn’t interested in being paid for its inventions,” he said.

To allow AI to be listed as an inventor would require a change in the law, presenting difficulties for patent offices.

If patent offices were to entertain a “legal fiction” of having a named human inventor listed on a patent where there was none, this would “cause problems both systematically and on a case-by-case basis”, Roberts said.

Noam Shemtov, senior lecturer in IP and technology law at Queen Mary University of London, told WIPR that there was “no clear benefit” to identifying AI as an inventor.

“There are clear rationales for identifying humans as inventors; there are none in relation to AI,” Shemtov said.

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More on this story

Patents
23 December 2019   Late last week, the European Patent Office refused two patent applications that list an artificial intelligence application as the sole inventor.
Patents
29 January 2020   The European Patent Office has said it rejected two patent applications naming the machine Dabus as an inventor because European law requires an inventor to be a “natural person”.