With the drafting of the "Artificial Intelligence Act" (April 2021), the European Commission has made its first attempt at comprehensively regulating the expansive world of AI. Whilst the draft legislation extensively addresses the regulation and classification of AI technology, it does not mention another area of concern regarding Artificial Intelligence, namely intellectual property rights. Identifying IP rights as a major issue, the EU Parliament adopted a resolution on IP rights for the development of AI technologies in October 2020. In it, the Parliament called upon the Commission to ensure a high level protection of intellectual property rights when regulating AI. Despite the report being forwarded to the Commission well before it finalized its proposal for the "Artificial Intelligence Act", the protection of intellectual property rights is not mentioned in the draft legislation. Merely an Annex published alongside it briefly mentions the challenges of protecting intellectual property rights in connection with AI-assisted outputs.
Existing intellectual property laws don't allow AI systems to be recognized as inventors, which threatens the integrity of the patent system and the potential to develop life-changing innovations. Current legislation only allows humans to be recognized as inventors, which could make AI-generated innovations unpatentable. This would deprive the owners of the AI of the legal protections they need for the inventions that their systems create. The Artificial Inventor Project team has been testing the limitations of these rules by filing patent applications that designate a machine as the inventor-- the first time that an AI's role as an inventor had ever been disclosed in a patent application. They made the applications on behalf of Dr Stephen Thaler, the creator of a system called DABUS, which was listed as the inventor of a food container that robots can easily grasp, and a flashing warning light designed to attract attention during emergencies.
"It is likely a matter of time until an AI will be able to simulate human thought, think creatively, and independently identify and solve problems…. If current laws remain unchanged…the owner of the AI-generated IP can and likely will attempt to protect AI-based inventions as trade secrets to the extent possible." The past few years saw a meteoric rise of artificial intelligence (AI) products, services, and applications. AI has evolved from merely a buzzword or a cool new idea to a substantively used tool in a variety of applications, including autonomous driving, natural language processing, drug development, finance and cybersecurity among others. Companies, universities, and inventors world-wide noted the importance of AI and began seeking to patent various aspects of AI technology.
In recent years, art and technology have been merging together. When thinking of art, it's typical to initially think of things like paintings, sculptures or photography. However, technological advancements have resulted in many artists utilizing technology in their work. Patricia Search is a professor in the Communication department at Rensselaer Polytechnic Institute as well as the Director, Center for Global Communication and Design. George Grossman, attorney at Grossman & Associates, highlights that "the use of electronic databases in the legal profession will increase the number of research materials available to lawyers by providing access to a larger number of court opinions as well as access to other important references, such as statutory or regulatory material and legal comments about court decisions."
Increasingly, companies are using artificial intelligence to invent new methods and products. But can a named inventor be a non-human machine under the law? That depends on which country's laws are being applied. The question of whether a country's Patent Act requires an "inventor" to be a human being is a question of statutory construction. For example, in the U.S. the statute requires an application for patent be made "by the inventor…in writing to the Director."1
On September 2, 2021, the US District Court for the Eastern District of Virginia granted the United States Patent and Trademark Office's (USPTO's) motion for summary judgement, finding that an artificial intelligence (AI) system cannot be named as an inventor on a patent. The action concerned two patent applications that Stephen Thaler had filed with the USPTO, which he alleged should not have been rejected by the Office. The USPTO had rejected the applications on the basis that no natural person was identified as an inventor. Thaler argued that a patent application for an AI-generated invention should list the AI system as the inventor when the AI system has met the invention criteria. Thaler alleged that he developed and applied advanced AI systems that are capable of generating patentable output under conditions where no natural person traditionally meets inventorship criteria. Thaler is the owner of "DABUS," an AI machine that "invented" a light beacon that flashes in a new and inventive manner to attract attention, and a beverage container based on fractal geometry.
Stephen Thaler and Ryan Abbott plan to bring a light beacon, a beverage container, and a machine called Dabus into court, along with a simple question: Does an inventor need to be human? Depending on how they respond, a panel of judges on the U.S. Court of Appeals for the Federal Circuit could open the door to another significant question: What is "obvious" to a machine? A basic tenet of U.S. law is that patents aren't awarded for inventions that are obvious. The standard of obviousness in patent law is measured against a hypothetical person of ordinary skill in the art. Putting artificial intelligence, with its potential for near omnipotent capabilities, on equal footing as human inventors could have a significant impact on patent law's obviousness standard, attorneys and patent professionals say.
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. 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.
Earlier this month, a federal district court issued the first judicial decision in the country addressing whether an AI system can be an "inventor" under U.S. patent law. The decision was rendered by the U.S. District Court for the Eastern District of Virginia in Thaler v. Hirshfeld on appeal from the U.S. Patent and Trademark Office's (USPTO) decision that refused to allow Thaler's two patent applications to proceed because he listed DABUS (an AI machine) as the inventor. Thaler filed the applications in 2018--one for an invention used to contain food and the other for a flashing beacon for attracting attention in emergencies. In statements filed in support of the applications, Thaler listed DABUS as the inventor, claiming that he had acquired the right to the grant of the patents by "ownership of the creativity machine." In affirming the USPTO's denial of the applications, the court held that based on the plain statutory language of the U.S. Patent Act and Federal Circuit authority, an AI machine cannot be an inventor because an inventor must be an "individual," which under common interpretation and court precedent means a natural person. The court stated that Thaler's argument was based on policy considerations and the purpose of the patent clause of the U.S. Constitution, and that the decision to expand the scope of inventorship is squarely within the authority of Congress.