"One could state that there is no need for attributing cognitive autonomy to an AI system, since it is still bound by an initial algorithm, developed by humans."
With inventions that are (co)developed by an AI (‘Artificial Intelligence’) system, the odd situation may occur that there is an invention that meets all the requirements for a patent application (novelty, inventive step, industrial application, and legality), but the AI is not a human being. So the main question is: who – or what – can develop an invention that may be eligible for a patent grant? An AI can create, but is it ‘creative’ enough to meet the requirement of inventive step? On 21 December 2021, the Legal Board of Appeal (‘BoA’) of the European Patent Office (‘EPO’) issued its ruling on this fascinating question.
Factual background and worldwide proceedings
Dr Stephen L. Thaler aims to register the AI system ‘DABUS’ as the formal inventor in several patent applications around the world. Already in 2018, Dr Thaler and his team filed the first patent application denoting DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) as the sole inventor in the United Kingdom (UKIPO). Several patent applications would follow in a.o. Europe (EPO), Australia (IPA), the United States (USPTO) and South Africa (CIPC). This indicated the start of long and controversial legal proceedings to try and acquire a patent for DABUS. This would mean that, if the patent would be granted, not Dr Thaler or another natural person, but DABUS – the AI system itself – would be the patent holder.
Until last summer, the application was rejected by all of the regarded IP offices on the basis that the inventor named in the patent application should be a natural person and cannot be an AI system. Therefore in Europe, the EPO Receiving Section decided that the application requirements of the European Patent Convention (‘EPC’) were not met.
But in July 2021, the CIPC of South Africa awarded a patent to the AI system itself for the first time ever. It must be noted that South Africa has a registration-based patent system, which means that only formal requirements are evaluated in the application process. It remains to be seen if the patent will be upheld in the Substantive Search and Examination (‘SSE’) procedure.
Furthermore in Australia, the Federal Court of Australia ruled in ‘Thaler v Commissioner of Patents’ that DABUS can be deemed inventor under the Australian Patent Act 1990. In that Act, similarly to South Africa, there is no legal definition of the notion ‘inventor’ or any provision that expressly refutes naming an AI as the formal inventor. There is however no decision on the patent application itself yet, and the applicant must request substantive examination within five years after the filing of the application of the patent. Which may lead to another result.
On 21 December 2021, the EPO Legal Board of Appeal dismissed the attempt of Dr Thaler to acquire a patent for an invention denoting DABUS as the formal inventor. The BoA held that only human beings with legal capacity can be considered inventors under the EPC. It thereby affirmed the decision of the EPO Receiving Section to refuse patent applications EP 18 275 163 and EP 18 275 174. This means that the application is already rejected in the formal stage – unlike the situation in South Africa.
The BoA based its decision on Articles 81 and 60(1) EPC and Rule 19(1) EPC. It also stated that DABUS could not transfer any rights to the applicant, which was the auxiliary request that Dr Thaler subordinately claimed.
Conclusion and key takeaways
Part of the reasoning of the EPO corresponds with common sense: if an AI system would be granted rights in the shape of a patent, it would not be able to exercise those rights in e.g. infringement proceedings because it is simply physically not able to do so. And even if this would somehow be the case, it is commonly accepted that legal capacity and legal personality are required to exercise rights – which machines or systems still do not have. The same goes for one of the main purposes of patent grants: incentivising innovation. AI systems do not need – or are not susceptible to – legal incentives in the same way as human beings. As a guideline, one could state that there is no need for attributing cognitive autonomy to an AI system, since it is still bound by an initial algorithm, developed by humans.
For now, the (European) discussion has come to a close. Only natural human persons can be deemed inventor under the EPC. And on appeal, the EPO affirmed this – once again.
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