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Can a Robot Invent? The Fight Around AI and Patents Explained

Sept. 9, 2021, 9:01 AM

Patent offices and courts around the world are being asked to tackle a similar question: can an artificial intelligence system qualify as an inventor for a patent?

A test case making its way through several countries—from Saudi Arabia to Australia to Brazil—has spurred debate about advancements in artificial intelligence technology and questions about whether patent laws need to be revised to recognize machines as inventors.

A judge in the U.S. District Court for the Eastern District of Virginia recently ruled that, under current U.S. law, AI can’t be listed as an inventor on a patent. The ruling was in line with what U.S., British, and EU patent officials have concluded.

(1) What started this?

The push to recognize AI as an inventor comes from Ryan Abbott, a University of Surrey law professor, and Stephen Thaler, a computer scientist from Missouri. Thaler built an AI “creativity machine” called DABUS—which stands for Device for the Autonomous Bootstrapping of Unified Sentience—and is trying to land patents for its inventions in various countries.

Thaler teamed up with an international team of attorneys, led by Abbott, to file applications on two inventions: a food container and a light beacon. The applications list DABUS as the inventor.

Thaler says DABUS was programmed as a series of neural networks and independently created the inventions. He also says DABUS recognized the “novelty and salience” of the container and beacon, according to U.S. Patent and Trademark Office documents.

(2) Who owns an AI-inventor patent?

Thaler maintains he can’t be listed as the inventor on the applications because he would be taking credit for inventions that aren’t his. Listing DABUS as the inventor protects the “moral rights of human inventors,” he said in U.S. court filings, and prevents a person from falsely claiming credit.

Thaler also said that inaccurately listing himself as an inventor could expose him to criminal penalties, and render the patent invalid or unenforceable.

But Thaler and his team, the Artificial Inventor Project, aren’t advocating that a machine should actually own its patent. Rather, they argue the owner of the artificial intelligence system (in this case, Thaler) should be the owner of the patents.

That means Thaler would control the ownership rights, including the right to negotiate licenses or sue for infringement. Abbott has also suggested the requirement that an inventor be listed on a patent be made optional.

(3) Why does this matter?

Companies are investing in artificial intelligence and pushing to advance the technology. There’s a debate whether the technology is yet at a level where artificial intelligence can truly invent.

Abbott has argued, however, it’s important to have clear rules in place.

Whether patents are available for inventions derived from AI could influence investment decisions, some attorneys say. There are also concerns that not allowing patents for these inventions could put the U.S. at a competitive disadvantage if other countries do allow them.

Abbott has called the DABUS effort an “exercise in public rethinking.”

Thaler and Abbott’s efforts have jump-started a wide-ranging debate. The U.S. patent office in 2019 asked for public comments about how to address AI as an invention and as an inventor. The UK patent office and World Intellectual Property Office have also asked for feedback.

(4) What do patent offices say?

The U.S. Patent and Trademark Office rejected the DABUS applications in April 2020. The office said that under U.S. law, an inventor must be a person, not a machine. The European Patent Office and the U.K. Patent Office have refused applications for similar reasons under their respective laws.

Thaler found some success in July, when South Africa’s patent office issued a patent—believed to be first awarded to an invention conceived by AI.

There’s a caveat: attorneys have pointed out that, unlike some other countries, patent applications in South Africa don’t go through a substantive examination. As long as the formalities have been followed, South Africa registers a patent.

Thaler has applications pending in several other countries, including China, Brazil, and Saudi Arabia.

(5) How do courts see it?

Judge Leonie Brinkema in the Eastern District of Virginia addressed the question in a Sept. 2 ruling, after Thaler appealed U.S. patent rejections. Brinkema ruled that under U.S. law, only a human can be an inventor.

“As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship,” Brinkema wrote.

“But that time has not yet arrived,” she continued, “and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.”

Earlier this year, an Australian court overturned a rejection from that nation’s patent office and ruled a machine could be an inventor. Justice Johnathan Beach said that, in his view “an artificial intelligence system can be an inventor.” The Australian patent office says it will appeal the decision.

Meanwhile, in the U.K., a judge in September 2020 dismissed Thaler’s appeal of his refusals in that country. That judge said that “DABUS is not, and cannot be, an inventor within the meaning of” UK patent law, “simply because DABUS is not a person.”

Other appeals are still pending, according to the Artificial Inventor Project.

To Learn More:

—From Bloomberg Law

As Artificial Intelligence Expands, So Do Legal Protections
AI Can’t Be Named Inventor on Patent, Agency Says (1)

—From Bloomberg News

Only Humans, Not AI Machines, Get a U.S. Patent, Judge Says (1)
One Man’s Quest to Get an AI Machine a Patent Gathers Momentum
Edison, Morse ... Watson? AI Poses Test of Who’s an Inventor (1)

To contact the reporter on this story: Matthew Bultman in New York at mbultman@correspondent.bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com; Jo-el J. Meyer at jmeyer@bloombergindustry.com

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