Patents
Posted on 24/1/2020

Can a non-human be a patent inventor?

The UKIPO has now come to a decision as to whether a non-human can be listed as an inventor.

In a follow up to our summer article on the first listing of a computer program, DABUS, as an inventor on a patent application, we report on the UK Intellectual Property Office’s (UKIPO) decision on the applications and question whether the patent system, like many other areas, is going to have to adapt to a world changed by AI.

Background

As previously reported, the applicant, Stephen Thaler, filed two patent applications for inventions created by the artificial intelligence program DABUS, one for a new shape of food container and a second for a light for attracting attention in an emergency.  Neither invention was within the fields of expertise of DABUS’ creators and, as such, they viewed DABUS itself as the devisor of the invention.

The decision

Perhaps unsurprisingly, the Hearing Officer found that DABUS was not a ‘person’ as envisaged by the UK Patents Act (‘Act’) and as such could not be considered an inventor.  Arguments were made to the evolving nature of other aspects of the Act, specifically those relating to computer programs.  These arguments were discounted however by noting that the changing interpretation of computer programs had been intentional from the earliest drafting of the European Patent Convention, whereas given that it was inconceivable that an inventor could be anything but a human, there is no indication that “who” could be an inventor was open to similar reinterpretation.

The Hearing Officer further considered the entitlement of an applicant to the inventions of an AI.  It was agreed by all parties that an AI was not a legal entity and could not own property.  This, the Hearing Officer stated, was the flaw in the applicant’s argument.  DABUS could not own the intellectual property, nor was it capable of entering into a contractual agreement to transfer that property to another, namely the applicant.  The applicant had argued that his ownership of DABUS granted him the right to the patent. However, such a derivation of right is not found in the Act and as such the applicant was not entitled to file the applications.

Consequently, the two applications in question were to be taken as withdrawn when the 16-month period for filing a statement of inventorship, which identifies the inventor(s) and sets out how the applicant derived the right to the invention, ends.

Future

For a project which, from the start, sought to redefine who, or what could be an inventor for the purposes of a patent, the failure of these applications is not a failure at all.  A UKIPO decision was never going to be the source of such a change, but as the Hearing Officer observed there are legitimate questions which must be raised more broadly and this case may be the catalyst for that conversation.

At its heart the patent system is there to encourage innovation. When all indication is that AI will generate more of that innovation in the future, it may be that the patent system needs to evolve alongside the technologies it supports.  Hopefully these issues can be addressed in the near future, giving individuals and companies hoping to innovate in this way some degree of certainty.

This is not the last that will be heard of this case with an appeal likely to be filed and the results of corresponding applications in other jurisdictions to be considered.  The first steps in redefining inventorship and AI’s role in innovation have been taken and we will keep you informed as the case and field evolves.

A link to the full decision can be found here: https://www.ipo.gov.uk/p-challenge-decision-results/o74119.pdf

If you have any questions about intellectual property please get in touch and speak to one of our team.