“The [UKIPO] Hearing Officer said the Office accepted that DABUS created the inventions in the patent applications, but that as it was a machine and not a natural person, it could not be regarded as an inventor. Moreover, ‘there appears to be no law that allows for the transfer of ownership of the invention from the inventor to the owner in this case, as the inventor itself cannot hold property.’”

The European Patent Office has refused two European patent applications that designated an artificial intelligence called DABUS as the inventor, following a non-public hearing on November 25, 2019.

The applications are for a “food container” (number EP3564144) and “devices and methods for attracting enhanced attention” (number EP3563896). They were filed by the Artificial Inventor Project, which has so far filed patent applications for the inventions via the Patent Cooperation Treaty (PCT) in the United States, United Kingdom, Germany, Israel, China, Korea and Taiwan.

DABUS was developed by Dr. Stephen Thaler, who is named as the applicant on the patent documents. (See “Artificial Intelligence Inventor Asks If ‘WHO’ Can Be an Inventor Is the Wrong Question?”, IPWatchdog, August 5, 2019.)

Inventor Has to Be Human Being

The EPO has not yet published its reasons for refusing the applications but merely stated that “they do not meet the requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, not a machine.” The refusal refers to Article 81 and Rule 19 of the EPC.

Article 81 of the EPC states: “The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent.” Rule 19 concerns the designation of the inventor. Neither specifically addresses the possibility of a non-human inventor.

Professor Ryan Abbott of the Artificial Inventor Project told IPWatchdog that an appeal would be filed. He said he had not yet seen the EPO’s reasoning for the decision, which is expected to be published later this month.

UKIPO Encourages Debate

The UKIPO has also refused to accept the DABUS applications, saying they shall be taken to be withdrawn at the expiry of the 16-month period. The Office has published a decision setting out its reasons.

In the decision, the Hearing Officer, Huw Jones, said the Office accepted that DABUS created the inventions in the patent applications but that as it was a machine and not a natural person, it could not be regarded as an inventor. Moreover, as DABUS has no rights to the inventions, it is unclear how the applicant derived the rights to the inventions from DABUS: “There appears to be no law that allows for the transfer of ownership of the invention from the inventor to the owner in this case, as the inventor itself cannot hold property.”

However, the Hearing Officer added that the case raised an important question: given that an AI machine cannot hold property rights, in what way can it be encouraged to disseminate information about an invention? He said:

As the applicant says, inventions created by AI machines are likely to become more prevalent in future and there is a legitimate question as to how or whether the patent system should handle such inventions. I have found that the present system does not cater for such inventions and it was never anticipated that it would, but times have changed and technology has moved on. It is right that this is debated more widely and that any changes to the law be considered in the context of such a debate, and not shoehorned arbitrarily into existing legislation.

The UKIPO Formalities Manual was updated in October last year to say that an AI inventor is not acceptable. However, the Hearing Officer said this had no bearing on the decision in this case.

Further Debate Expected

Professor Abbott told IPWatchdog the decisions were not surprising, as “this is a highly novel issue of law for patent offices to deal with.” He added: “We expected that judicial or other multi-stakeholder involvement would be required.”

He said the principles driving the Artificial Inventor Project are that applicants should be guided by truth (i.e., if an invention has been made by a machine then they should not lie about it) and that making patent protection available for AI-generated works will incentivize innovation. He has set these arguments out in an article published in the WIPO Magazine.

The Project does not argue that AI can be the owner of a patent, added Professor Abbott. AI systems cannot own property, and there is no reason to change the law to allow this. “The incentives in the patent system work with the AI as an inventor, and the AI’s owner as the owner of the patent,” he said.

The Project is planning to work with local attorneys to file the applications in more jurisdictions this year.

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