INSIGHT

Can artificial intelligence own a patent?

By Tess Kirkinis
Intellectual Property Patents & Trade Marks Technology

In brief 3 min read

A team at the University of Surrey has filed two patent applications created autonomously by artificial intelligence. This is prompting legal authorities in the United States, United Kingdom and Europe to consider the boundaries of patent law and decide whether artificial intelligence machines can be named as inventors and owners of patents. Marking the beginning of a fascinating future, this article considers this test case in the context of Australian patent law.

Can artificial intelligence be named as an inventor and own a patent?

The boundaries of patent law are being tested by a team led by Professor Ryan Abbott at the University of Surrey.

This team has filed two patent applications for two inventions created autonomously by artificial intelligence.1 One patent claims an invention for a new type of beverage container based on fractal geometry (see here). The other patent claims an invention for attracting human attention in emergencies, which may help with search and rescue operations (see here).2

Both inventions were created by DABUS – an artificial intelligence machine built by Stephen Thaler, founder and chief executive of Imagine Engines Inc. DABUS conceives new ideas and art forms formed by linkages between artificial neural networks.3 On this basis, the team has said it is improper to list Stephen Thaler as the inventor as he did not conceive the creations nor did he direct the machine to invent them.4

International applications

The patent applications are pending in the PCT, United States Patent and Trademark Office (USPTO), European Patent Office (EPO) and United Kingdom Intellectual Property Office (UKIPO) and will prompt legal authorities to consider whether artificial intelligence can be the named inventor and owner of patents. This is also likely to challenge the meaning of 'inventor' under 35 U.S.C. § 100 of the America Invents Act (US)5 and section 7(3) of the Patents Act 1977 (UK).6

As legal authorities consider this vexed question, a number of outcomes may be possible, including:

  • DABUS is the named inventor and owns the patents;
  • DABUS is the named inventor but Stephen Thaler owns the patent; or
  • Stephen Thaler is the named inventor and owns the patent.

A more perverse outcome would be that the patent is not granted on grounds that there is no inventor.

The position in Australia

The team is also looking to bring this test case in other countries, including Australia.7

Under the current Patents Act 1990 (Cth) (the Patents Act), the question as to whether a patent would be granted where the named inventor is autonomous artificial intelligence remains unresolved. It has not been considered by case law.8

In addition, it is not contemplated by the Patents Act. Under the Patents Act, patent ownership is prescribed by section 15(1): a patent may be granted to a 'person' who is the 'inventor' or a 'person' who is entitled to have the patent assigned to them. 'Inventor' is not defined in the Patents Act and 'person' is defined in the Acts Interpretation Act 1901 (Cth) to denote a 'body politic or corporate as well as individual'.

On this basis, it would appear that under the current Patents Act, an inventor or a person entitled to have a patent assigned to them must either be a body politic, corporate or individual. Moreover, if artificial intelligence is the inventor of a patent, there is a question under the current status of the law as to whether it has the capacity9 and the right to assign a patent to another person.

It may be that the law will eventually recognise artificial intelligence as a legal person just as it did with corporations in 1896.10

A fascinating future lies ahead

The forthcoming use of artificial intelligence challenges the current scope of patent law and is forcing patent offices around the world to grapple with a future where artificial intelligence possesses the capability to create new inventions. We will keep you updated as to the decisions in USPTO, UKIPO and EPO and whether this test case is brought in Australia. This is the beginning of a fascinating future.

Footnotes

  1. University of Surrey, World first patent applications filed for inventions generated solely by artificial intelligence (1 August 2019) <https://www.surrey.ac.uk/news/world-first-patent-applications-filed-inventions-generated-solely-artificial-intelligence>.

  2. The Artificial Inventor Project, Patent Applications (2019) <http://artificialinventor.com/patent-applications/>.

  3. Stephen L. Thaler, Home of the Creativity Machine (2019) <http://imagination-engines.com/iei_founder.php>.

  4. Wall Street Journal, Can an AI System be Given a Patent? (11 October 2019) <https://www.wsj.com/articles/can-an-ai-system-be-given-a-patent-11570801500>.

  5. 'Inventor' is defined to mean 'individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention'.

  6. 'Inventor' is defined to mean 'the actual deviser of the invention'.

  7. Wall Street Journal, Can an AI System be Given a Patent? (11 October 2019) <https://www.wsj.com/articles/can-an-ai-system-be-given-a-patent-11570801500>.

  8. cf Ice TV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458.

  9. cf sections 124-125 of the Corporations Act 2001 (Cth).

  10. Salomon v A Salomon & Co Ltd [1896] UKHL 1.