AI Denied Inventorship

Role of computers as inventors

Computers have long been known to assist humans in various tasks by speeding up calculations, assisting in data aggregation and analysis, executing simulations, real-life models, etc, well the list goes on and on. 

Times changed, technology saw rapid advancement and what we witnessed over the years was the emergence of nascent yet powerful technologies like “Artificial Intelligence” and “Machine learning” 

The present scenario somewhere lies in the middle, where we are still exploring possibilities that “AI” can give shape to and at the same time we are also witnessing advancement to an extent that even the creators of the AI systems themselves are unacquainted with the technological domains of the new products invented by the AI.

Another noteworthy realization that has dawned upon us is that AI systems are also capable of Identifying the novelty of their own created products which is one of the important aspects when it comes to acquiring intellectual property rights

Patent applications with AI as an inventor

DABUS- which stands for ‘Device for the Autonomous Bootstrapping of Unified Sentience’- is an AI system developed by Dr. Stephen Thaler, has recently made two inventions.

Dr. Thaler had filed patent applications for these inventions with the United States Patent and Trademarks Office (the “USPTO”), the European Patent Office (the “EPO”) and the UK Patent Office (the “UKIPO”) identifying himself as the assignee and DABUS as the inventor. According to the Artificial Inventor Project, the innovations described in the patent applications are products of an extensive artificial neural system that combines the memories of various learned elements into potential inventions and these inventions are autonomously conceived by the AI. Also, at this point, it must be noted that it was the AI itself, which recognized the novelty of these inventions.

So what is in store for a case of such nature in our intellectual property system. Is the case perceived differently globally?

The following outlines 

Rejection and explanation by EPO

In January 2020, each of EPO and UKIPO rejected both the patent applications that designated DABUS as the inventor. An explanation from EPO for rejecting these applications states that indicating the name of any machine does not meet the requirements of Rule 19(1) EPC, which requires that the designation shall state the family name, given names and full address of the inventor and, where the applicant is not the inventor, a statement indicating the origin of the right to the EU patent, including the signature of the applicant. Names given to things may not be equated to names given to natural persons as the names given to natural persons allow them to exercise rights and also form part of their personality.

Rejection and explanation by USPTO

On similar grounds, the USPTO on 22 April 2020, rejected the application (16/524,350) stating that “inventorship under U.S. patent law is limited to natural persons”. Earlier, the USPTO issued a “Notice to File Missing Parts,” indicating that the application failed to identify the inventor by his/her legal name to which Thaler filed a petition requesting a supervisory review of inventorship stating that DABUS autonomously created the invention without being trained in any relevant field of invention. 

However, in denying the petition, USPTO suggested that the statutes 35 U.S.C. §§ 100(f) provides the term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention and 35 U.S.C. §§ 100(g) provides the terms ‘joint inventor’ and ‘coinventor’ mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

Citing 35 U.S.C. § 101, the USPTO asserted that the words like “individual” and “whoever” in the context of inventorship, imply natural persons. Furthermore, 35 U.S.C. § 115(b) requires that the oath or declaration be signed by an individual when that individual believes “himself or herself” to be an inventor of the claimed invention. 

Moreover, Thaler’s request to substitute him in place of DABUS as the inventor was also denied stating that since DABUS is an AI, it doesn’t hold legal rights and cannot assign its rights to a human being. (source)

Scenario in India

Section 6 of the Indian patent *Act * 1970 implies that an inventor is a natural person which is further supported by section 2(1)(p) which states that “patentee” means the person for the time being entered on the register as the grantee or proprietor of the patent.

However, section 2(1)(s) states that “person” includes the Government which is a non-person entity and section 2(1)(y) excludes only the first importer of an invention into India, or a person to whom an invention is first communicated from outside India as “true and first inventor”. Hence, there is room for ambiguity regarding the status of an AI as an inventor. 

Future of AI in IP

As of the current scenario, the AI cannot be granted inventorship for an intellectual property because they do not have the required personality to claim the rights for their creations. Since AI is a fast-growing field and holds a vast potential for future innovation, the issues regarding patentability and ownership of the inventions made fully or partially using it need to be addressed. This case has already instigated many debates and only time can tell the true fate of AI as an inventor when it comes to IP rights. 

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