Artificial Intelligence as an Inventor in Patent Law

Artificial Intelligence (hereinafter “AIs”) is a computer science discipline focused on developing machinery and systems with the ability to perform tasks attributable to human intelligence. From a patent law perspective, AIs were considered incapable of facilitating inventive processes autonomously and the permitted arena was limited to ‘AI-assisted inventions. With technological advancement, AIs can not only provide, select and test technical solutions but also go beyond the pre-defined tasks.

Artificial IntelligenceUnder patent law, assumption lies of inventors being necessarily humans. Legal personhood has not been recognized in relation to any ‘electronic person’ by any court. While the natural person to first recognize or discover the AI has been considered to be the inventor in order to validate grant of patents, the recognition of inventions without an inventor is an issue yet to be dealt with.

Stephen Thaler v. Comptroller General of Patents Trade Marks and Designs

Facts of the case

Two patent applications were filed by the Appellant disclosing a patentable invention under Section 1 of the Patents Act, 1977 (hereinafter “the 1977 Act”). Under Section 13(2), the Appellant filed a statement of inventorship identifying ‘DABUS’, the name of the Appellant’s AI machine, as the family name of the inventor. In the Amended Form submitted by the Appellant, it was made clear that the invention was “entirely and solely conceived by DABUS”.

The present appeal is the result of rejection of the two patent applications by the United Kingdom Intellectual Property Office (hereinafter “UKIPO”) on the basis of non-satisfaction of Section 13(2) of the 1977 Act.

Issue raised

The primary issue dealt with was whether the 1977 Act necessitates an ‘inventor’ to be a ‘person’, meaning a natural person or could be extended to include AIs within its ambit.

Analysis

The issue was dealt with first through a statutory perspective. The 1977 Act was referred to opine that the same has been drafted in a way which points towards the inventor being a person. Section 7 of the 1977 Act dealing with “right to apply for and obtain a patent” was deliberated upon  to showcase that Section 7(2)(a) and Section 7(2)(b) deem to recognize only a person as an inventor by virtue of Section 7(2)(c) when it states, “the person or persons mentioned in paragraph (a) or (b)”.

Additionally, Section 13(1) of the aforesaid act confers a right upon the inventor or joint inventors, the same giving effect to Article 4ter of the Paris Convention for the Protection of Intellectual Property, 1883. This right was suggested to be a moral right, the right of being identified as a creator of something. Further, since only persons can have moral rights, the Section again essentially identifies an inventor to be a person.

Lord Arnold referred to Yeda Research and Development Company Ltd. v. Rhone- Poulenc Rorer International Holdings, where it was held that the 1977 Act is an exhaustive code. Sections 2(4), 8(1) and 12(1) were referred to in the above judgement identifying the inventor as a ‘person’ at various instances. Justice Elisabeth conclusively agreed with Lord Arnold while holding that a patent is in the nature of being a statutory right which can only be granted to a person. The statutory provisions under the scheme of the Act suggesting a contrary view point, DABUS was not entitled to be an ‘inventor’ under Section 7 of the Act.

At this juncture, it was noticed and that the 1977 Act was deprived of even a single reference to inventions by machines, directly or indirectly given the time of its enactment. Hence, a need to amend the statute was considered when such inventions are plausible and pragmatic in reality.

Substantiating upon the issue, it was concluded that DABUS could not be a person to whom an invention can be attributed.

Impact of the Judgement

The judgement forecasts incompatibility of the U.K. Patent Legislation with technical reality. For the mere reason that the legislators could not have foreseen such a possibility in future does not preclude an urgent need for an amendment.

Approach taken by South Africa and Australia

In South Africa, the Companies and Intellectual Property Commission did not hesitate from granting patent recognizing DABUS as the inventor and Dr. Thaler as the owner. The differentiating factor for the contrast approach was the absence of definition of “inventor” in the Patents Act, 1978 and the domestic patent system. Again, the country does not have a comprehensive patent examination process and as such patents can be granted on fulfilling minimum formalities.

In Thaler v. Commissioner of Patents, the Australian court opined that ‘inventor’ in its ordinary sense does not exclude non-humans. The court, in the above judgement, deliberated upon the uncertainty associated with recognizing the person actually responsible for the inventive process since numerous people contribute to the satisfactory outputs associated with an AI system.

The Indian Perspective

The India view-point on the subject aligns with the U.K. perspective which is against granting patents to AIs. The recourse taken to justify the view is the statutory scheme of the Indian Patents Act, 1970. Sections 2(1)(s) and 2(1)(y) indirectly refer to the inventor being a person when any passive reference is made to the same. Section 6(1)(a) reads, “An application for a patent for an invention can be made by any person claiming………” thus laying down that the ‘person’ must claim to be the first and true inventor of the invention.

In Som Prakash Rekhi v. Union of India, the Supreme Court laid down the answer to who can qualify as a legal ‘person’ in accordance with the Indian judicature. Accordingly, it was held that a jurisdictional person is someone to whom the law attributes ‘personality’. Jurisdictional personality is a legal entity who has the rights to sue and the capability to be sued by another entity. An AI does not possess the capability to use numerous rights or perform the required duties of a juristic personality independently.

The Ayyanger Committee Report of 1959 reveals the legislative intent behind the enactment of the Act. The report addresses that the very intent of mentioning the inventor for any particular patent is a matter of right of the inventor. Further, the report emphasizes that any person has a moral right of being named as an inventor even if he might not have all the legal rights over the invention. In this context, it can again be seen that AIs cannot be entitled to moral rights under the prevailing Indian laws.

Conclusion

The universal approach on the subject of AIs being ‘inventor’ of any invention is not aligned. It can be noticed that the jurisdictions wherein such applications were rejected, based their reasoning on statutory language and legislative intent of attributing moral rights. When a ruling is governed by strict statutory outlines, innovative reading in in consonance with the changing dynamics is usually restricted. While on the other hand, when technological deliberations supersede the statute, innovative thinking is facilitated. In this respect, it is pertinent that even if a ruling is unfavourable, guidelines for similar future events should be laid don recognizing the modern reality of AIs being capable to act autonomously. The Indian Patents regime also requires an amendment in this respect incorporating the law on AIs in the statutory scheme.

Author: Shailza Agarwal – a student of Symbiosis Law School (Noida), in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at IIPRD.

Leave a Reply

Your email address will not be published.

nineteen − eighteen =

Archives

  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010