On 21 December 2021, the Boards of Appeal of the European Patent Office (EPO) released its latest decision on the “Dabus” cases relating to identification of artificial intelligence as an inventor of a patentable invention. Adopting a similar approach to that taken by the UK Court of Appeal in September 2021, the EPO decided that “AI cannot be named as inventor on patent applications… under the European Patent Convention (EPC) an inventor designated in a patent application must be a human being”[i].

In this article, we will focus on the relationship between inventor and owner of a patent under English law and the role that contract is likely to play in AI-devised inventions.

Background

Since Dr Thaler first applied for a patent naming his AI “creativity machine” (also known as ideation machines), DABUS, as the inventor in 2018, the use of AI to generate inventions and the ownership of those inventions has been much discussed, but without any clear answers.  Under the UK Patents Act 1977, the first owner of a patentable invention is, in lieu of other arrangements, the inventor and the inventor is the “actual devisor” of the invention (s.7(2) of the Patents Act 1977).

In naming DABUS as the inventor and himself as the owner (as is the case in respect of the UK patents and also the European Patents in the recent EPO decision), Dr Thaler prompts the questions of not only the nature of an inventor, but also the mechanics of ownership of inventions.

Creativity machines as the devisor of inventions

“… In a human we would have called it creative, genius.  It was not. It was brute processing power and clever algorithms…”[ii]

The above quote gets to the heart of the debate around AI as an inventor.  Like other ideation machines, DABUS works to generate ideas or possible solutions to problems.  While people are likely to be involved in selecting and training a specific AI system, the results are generated by the AI.  The results may include an inventive answer to a problem (an invention), and, as such, the ideation machine may be the “actual devisor” of an invention.  How it arrives at that invention, however, is less a eureka moment and more the result of data processing carried out by the AI.

The process of the AI raises several questions related to inventorship, including where the patentable invention lies in the process (is it in the results or in the creation of the AI system?) and if the result is patentable, who may be the inventor, and therefore, the owner of the invention.  For the purpose of this article, we will assume that results generated by AI systems may be patentable inventions – though, no doubt, the debate about where the invention lies will continue to develop as use of these AI systems matures.

Developments at the UKIPO

The UK Intellectual Property Office (UKIPO) recently closed a consultation seeking views on whether the law in the United Kingdom should be changed to better accommodate AI devised inventions, as discussed in detail in a previous article.  In the consultation, the UKIPO asked respondents to choose from four possible approaches:

“Q. Patent protection for AI-devised inventions. Should we protect them, and if so, how should they be protected?”

Option 0: No change [to the current law]

Option 1: “Inventor” expanded to include humans responsible for an AI system which devises inventions

Option 2: Allow patent applications to identify AI as inventor [which may be achieved by either]: a) amend legislation to allow AI to be named as the inventor; or b) amend legislation to remove the requirement to name an inventor if the invention is devised by AI

Option 3: Protect AI-devised inventions through a new type of protection”

Invention and Ownership

Options 0, 1 and 2 all raise potential issues for ownership of patents protecting AI-devised inventions. For the purposes of this article, we will focus on those raised by options 1 and 2.

A human “responsible” for the AI System

Identifying a human who is “responsible” for the output of an AI system is emotionally pleasing because it enables humans to remain centre stage.  More pragmatically, it also means that as lawyers we can borrow from existing legal frameworks to identify inventors and ownership mechanisms. For example, (a) UK copyright protection for computer generated works, or (b) copyright afforded to film producers.

(a) Copyright protection for computer generated works

UK copyright law contains a provision enabling the “person by whom arrangements necessary for the creation of [a computer-generated work were] undertaken” to be named as the author of the work[iii].  The author in copyright holds a similar position to the inventor in patent, with the starting position being that the author is the first owner of the copyright work.

However, there are problems with this approach under copyright. For example, a copyright work must be “original” and, while originality is a lower standard than “inventiveness” under patent law, there remains a question as to whether a computer can generate something which is truly “original”.  The problems with this provision were highlighted by the UKIPO in its consultation, with the UKIPO seeking views as to whether this provision should be removed from UK copyright law. Seeking to replicate in patent law a mechanism which has proved problematic in copyright appears to risk creating new areas for uncertainty rather than bringing clarity to the law on AI-devised inventions.

(b) Authorship for film producers

The producer of a film is an author of the copyright work (i.e. the film)[iv] despite not necessarily having day-to-day involvement with the script, direction, or acting. English law affords the producer this authorship right because the producer is, “the person by whom the arrangements necessary for the making of the […] film are undertaken”[v].

In both of these cases, the idea that the person who makes possible the generation of the new work, whether computer-generated or a film should be rewarded with authorship is repeated. The human(s) behind an AI system may be akin to a film producer (or software programmer) in that they are the individual who programmes and/or provides training information for the AI system, thereby putting into place arrangements which enable the AI system to produce the resulting invention.

AI as the inventor – to name or not to name?

At first blush, allowing the AI system to be named as an inventor appears to be the most straightforward solution because it would remove the requirement for there to be a human inventor, but would otherwise retain the current system of patent filing. In contrast, removing the requirement to name the inventor only in the case of AI-devised inventions would create a false sense of ease – the idea that the process of patent filing is the same but the inventor is un-named.

However, things are not so straightforward when considering ownership.  As the inventor is the first owner of the patent, is the AI the first owner of the patent?

This potential outcome is fraught with uncertainty.  First, an AI is neither a natural nor a legal person (like a company) so cannot own anything.  If the AI should be named as the inventor, then we need additional changes to legislation to allocate ownership of AI-devised inventions.

Wrestling with ownership

If the inventor will be the human responsible for arranging the AI; assuming that the inventor is an employee, the owner of the patent application under UK patent laws will be their employer.  But who will that employer be?

There are already companies which specialise in developing AI for ideation purposes.  These companies have developed AI systems which they make available for use by other companies, for example in the field of drug discovery.  If the AI delivers an innovative, potentially patentable, solution which incorporates information from a healthcare company and uses the AI framework developed by the software company, who should own that solution (and any patent that results from it)?  Should it be the software company as the employer of the programmers and/or the healthcare company who’s staff provided the information and used the AI solution?

The law as it stands does not provide a straightforward answer to this problem and highlights the possibility that such an invention may, by default, be co-owned.

Contracting for clarity

The uncertainty in relation to potential ownership of AI-devised inventions may be regulated by contract between the parties (as is common in research collaboration agreements where there is often a split between ownership of “improvements” depending on the role played by each party and the use of either party’s pre-existing (background) intellectual property).  Without careful attention and focus on the intellectual provisions in contracts governing the use of an AI system, it is possible that the developer of the AI, whether intentional or otherwise, will either own or co-own any resulting AI-devised inventions.

We have previously written about the difficulties which may arise in the protection and commercialisation of co-owned inventions, and there is no reason to think that co-ownership would be any easier to manage in relation to AI-devised inventions.  As a result, we would advise both developers of AI systems and their users to carefully consider the potential outcomes from each project to identify IP which may be generated and allocate ownership rights from the outset.

[i] https://www.epo.org/news-events/news/2021/20211221.html

[ii] Richard Susskind talking about DeepMind’s AlphaGo at a talk for ILBF on 25 November 2021

[iii] Section 9(3) of the Copyright, Design and Patents Act 1988 (as amended)

[iv] s.9(2)(ab) Copyright Designs Patent Act 1988 (as amended)

[v] s.178 Ibid