Artificial Intelligence Cannot be an Inventor of Patents, Says USPTO (and the UKIPO and EPO)

Artificial intelligence is a topic that is near and dear to this writer's heart, and something that has the potential to hugely impact the world of intellectual property law. Whether it is in relation to the possibility of copyright protection being afforded to copyright works by AI, or even inventions devised by the same, both the legislatures and judiciaries of the world will have to tackle these questions more deeply as the technology evolves and becomes more commonplace. However, recently many national governing bodies dealing with IP have handed down decisions relating to artificial intelligence and patents, which will undoubtedly shape the direction we will be heading.

First off, the USPTO handed down its decision in Re FlashPoint IP Ltd, where it had to consider whether AI can be an inventor under US law, and therefore could own patents for those inventions. The case concerned applications for a patent relating to devices and methods for attracting enhanced attention (Application No. 16/524,350), which was created by DABUS - an AI that was created by Stephen Thaler. DABUS was solely listed as the inventor for the invention in question (with Mr Thaler being listed as its representative and assignee for the rights). At first instance, the USPTO rejected the application due to a lack of an inventor, and Mr Thaler subsequently appealed the decision. The Commissioner of Patents then handed down its opinion earlier this Summer.

Pursuant to 35 USC 115, an application for a patent has to include the name of the inventor of that invention being claimed, with "inventor" being defined as "the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention". The Commissioner then noted that the entirety of the law around this concept only speaks of 'natural persons', i.e. humans, and that the declaration at the end of the application requires a declaration from a person. In brief, the legislation seems to therefore preclude any non-human inventors from applying for patents. 

Furthermore, the Commissioner considered the decision in the University of Utah v Max-Planck-Gesellschaft, where the US Federal Court determined that 'inventors' of patents are the individuals that conceived the invention, which seems to, again, not include non-human inventors. Similarly, in the same case, the Court noted that "...only natural persons can be 'inventors'". The Commissioner then concluded that, based on the above precedent and interpretation of the provisions, AI cannot itself be an inventor. Additionally, even if applicants list a natural person as the inventor, when they have not invented the invention in question, the application will fail due to that person not fulfilling the inventorship criteria under the legislation. 

Mr Thaler also applied for patents in relation to the same invention in both the UKIPO and the EPO. 

The UKIPO handed down its decision in relation to Thaler's applications GB1816909.4 and GB1818161.0 in December 2019. Again, the rejection of the applications concerned the naming of DABUS as the inventor of the inventions, which, according to the UKIPO, does not fulfill the requirements of the UK legislation for registration. 

According to s. 7 of the Patents Act 1977, a patent can only be granted to the inventor of the invention, with an 'inventor' being defined as "...the actual deviser of the invention". Additionally, if no inventor is named in an application, s. 13 requires that the applicant identify the “person or persons whom he believes to be the inventor or inventors” in the application - clearly referring to persons and not non-human inventors. The UKIPO quickly determined that this indeed did require a natural person as the inventor. 

Finally we'll look at the decision from the EPO in late January 2020, specifically concerning applications EP18275163 and EP18275174. In its decision, the EPO determined that "...the inventor designated in a European patent must be a natural person", which was a standard that was intentionally applicable and supported by decisions in national European bodies (as above in the UK). The requirement for an inventor is also mandatory in relation to EP applications, and without proper legal personality the owner of the rights in the patents would be unable to exercise them, including any AI machines. With this in mind, the applications didn't meet the requirements of the EPO, and the applications were rejected. 

The above decisions highlight the current issues with AI and the legislative frameworks that require human inventors or creators for works to be able to be protected. Whether this changes in the future remains to be seen, but it would probably be more likely that the current scheme remains and AI is relegated to supporting human inventors in the creation of inventions, allowing for patentability and protection. Without this human end-point it would be improbable for AI to be the inventor of inventions barring a shift in legislative attitudes.