Insights: Academics challenge patent offices to accept an Artificial Intelligence as an inventor

As recently announced by the University of Surrey, a group of patent applications have been filed at the UK patent office and European Patent Office toward inventions allegedly solely created by an Artificial Intelligence.

Legal questions surrounding patents for AI are not new – patent offices around the world are already grappling with the patentable nature of AI inventions. For the applications filed by the University of Surrey, however, the Artificial Intelligence is not the subject of an invention, but allegedly the creator of an invention.

The AI, named “DABUS”, is the creation of Stephen Thaler, who is part of a group of academics at Surrey University who question current practice regarding the status of an “inventor” under patent law. The group’s position on the subject is summarised at their website, where the group argues that technological capabilities have advanced to the stage where genuine innovation can be sourced to AI programs, but patent law is lagging behind.

Historically, “inventors” have always been human beings. The Surrey University group argue that this assumption should be challenged, and that there should be no exclusion to an AI program being named as the inventor. For this reason, these applications have been filed so as to start a wider debate to resolve this question (and others) highlighted by the group.

The question of inventorship is always an important one when filing patent applications, since the identity of the inventor goes beyond which name is written on the front page of the granted patent. Importantly, under UK patent law, the ownership of a patent is granted primarily to the inventor. Where the rights to the patent are invested elsewhere, it is the result of “any enactment or rule of law” (e.g. a property assignment from the inventor or by virtue of employment of the inventor). Thus, for any patent, the identification of the inventor is important to determine who owns the patent in question (and therefore who can sell or license the patent, or enforce the patent against infringers).

Considering AI inventorship, both outcomes would have implications – if an AI cannot be named as an inventor, then who should? Analogous considerations already exist in the UK Registered Designs Act, which states that “In the case of a design generated by computer in such that there is no human author, the person by whom the arrangements necessary for the creation of the design are made shall be taken to be the author”. It could be that UK patent practice can follow suit and name the creator of the AI platform as the inventor.

If an AI can be named as inventor, then who owns the patent or patent application? As mentioned above, all questions of ownership start with the identification of the inventor. Given that AI programs cannot own property, it might be difficult to set out a chain of title under existing UK patent provisions.

It is possible that the patent offices may sidestep the issue by taking the position that AI programs are not capable of inventive thought, and refuse to allow an AI program to be named as inventor on these grounds. However, assuming that this approach is not taken, or the inventorship of the AI can be demonstrated, how the patent offices react to these applications will be of great interest.

If you have any questions about Artificial Intelligence in relation to patents, please contact your usual Boult Wade Tennant advisor.