31/01/2020
Artificial Intelligence (AI) has once again been in the news in the Intellectual Property world. Some of our previous insights have commented on AI innovation and in particular how different Patent Offices examine the patentability of AI inventions.
In short, AI inventions can in principle be patentable, but do have to meet the same criteria as patent applications in other fields. Patent Offices will examine all inventions following the law, case law and well established guidelines which seek to provide legal certainty for all users.
However, the European Patent Office has just published its decision setting out the reasons for its refusal of two European patent applications in which an AI system was designated as inventor.
In this decision, the issue being considered was whether the formal requirements of the European Patent Convention have been met if a European patent application designates an AI system as the inventor, rather than a natural person or in other words a human as is usually the case.
Thus, the basic question being asked was: Can AI be listed as an inventor on a European Patent application? The short answer to this question is no, and the EPO’s publication of its grounds for the decision provides an insight into their reasoning.
They explained that:
The European Patent Convention does not provide for non-persons, i.e. neither natural nor legal persons, as applicant, inventor or in any other role in the patent grant proceedings.
They also commented that the understanding that the inventor is a natural person appears to be an internationally applicable standard.
In other words, the whole legal framework of the European Patent Convention is based on the premise that the inventor designated in a European patent must be a natural person. A computer cannot be designated as an inventor.
This is not particularly surprising given that the patent system was developed to reward humans by providing a time-limited monopoly for an invention in exchange for a public disclosure how their invention works. Indeed some patent systems have been around for hundreds of years which, of course, predates computers and AI technology in particular. It remains to be seen if or when patent systems will be adapted to this and other technology in the future. However, recognition of AI as an inventor would require significant change to current patent systems and so seems unlikely in the near future.
The group behind the two European patent applications refused by the European Patent Office openly acknowledge on their website that they “seek intellectual property rights for the autonomous output of artificial intelligence”. And although the applications have been refused, they have certainly succeed in raising public awareness of the issue and AI in general.
The decision is open to appeal, but without a fundamental change in the law, it seems unlikely that any appeal will be successful.
Accordingly for the time being, in order to avoid refusal at the formalities stage, applicants will need to ensure that a natural person or in other words a human is always designated as an inventor on any European Patent application they file.
For the time being, this should not be problematic because current AI systems require some human input such as how the AI system is configured to solve the particular problem in question. This input will usually be sufficient for a human to be listed as an inventor on a European patent application.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
