News from the Ether - AI as Inventors

Can Artificial Intelligence create an Invention? If so, can it be named as an inventor on a patent application? The Australian Federal Court has found an artificial intelligence (AI) can be an inventor for the purposes of Australian patent law.

A PCT international patent application describes two inventions purported to be made by an AI named DABUS (Device for the Autonomous Bootstrapping of Unified Sentience).

The Artificial Inventor project, led by Professor Ryan Abbott at the University of Surrey, claims to have the first instance of an AI being listed as an inventor in such an application, and has generated a lot of interest among patent professionals. The project must convince officials in each jurisdiction that the relevant national law allows an AI to be listed as inventor. Expecting pushback from IP offices around the world, the project first tackled the US, European and UK IP offices. The application has been refused in these offices.

Not deterred, the project has gone ahead and filed patent applications in Israel, Germany, Taiwan, China, Japan, India, South Korea, Australia and New Zealand.

What are the questions IP offices are grappling with?

Patents can only be granted for inventions, and inventions are made by inventors. Patent law is different in every country, but consistently requires an inventor. Critics say that such machines behave in a way that superficially mimics invention. Whether machines can be creative is a very difficult question at the nexus of artificial intelligence programming and philosophy. However, national patent laws do not refer to either of these disciplines. Instead, they merely refer to "the inventor"; the drafters of the law would clearly have assumed the inventor is a human, but the precise wording of the law may leave the question open to debate in each country.

What did the Australian Court decide?

Australian patent law does not refer to the inventor when describing the purpose of the Act, instead referring to "the interests of producers, owners and users of technology and the public". Like the New Zealand Act, the Australian Act states that the right to be granted a patent is derived from the inventor (section 15). However, the Court found that the Australian Act's focus is not on the inventor, and an AI can be an inventor for the purposes of the Act.

It was clear to the Court that a patent can only be granted to a person, and that only an inventor who was a person could assign rights in an invention. However the Court held that while the Act stipulates rights or consequences for an inventor who is a person in some places, it does not logically follow that an inventor must be, and can only be, a person.

Justice Beach relied on three main points in finding that an AI can be an inventor:

  • referring to the dictionary definition of inventor, noting that inventor is an agent noun; an agent can be a person or thing that invents.
  • Referring to pharmaceutical development as an example of the reality in terms of other patentable inventions where it cannot sensibly be said that a human is the inventor; and
  • Noting that nothing in the Act clearly states that the inventor must be a human.

Interestingly, the Judge discussed the test for inventive step, which refers to a hypothetical construct of "a person skilled in the relevant art in the light of the common general knowledge". He noted this does not focus on the thought processes of an actual human, let alone the subjective thought processes of a human inventor.

This decision has now been appealed by IPAustralia on 27 August 2021 and will be heard by the Full Court of the Federal Court of Australia. We will keep you updated.

How has the patent application been received in New Zealand?

The New Zealand Patents Act is similar to the Australian Act in many respects. Its purpose refers to "promoting innovation and economic growth while providing an appropriate balance between the interests of inventors and patent owners and the interests of society as a whole". AI inventors cannot have interests. On the other hand, the Australian Court found that was not a bar to applying for an invention made by AI.

The New Zealand application has been examined, and unsurprisingly, an objection was raised that the details of a human inventor have not been provided. Since then, the Australian Court's decision has been handed down. The Applicant, Dr. Thaler now has the opportunity to respond to IPONZ regarding the New Zealand application. We will await developments in the case with interest.

Penny Walsh - August 2021

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