< Back to latest news & events

News

AI Assisted Inventions – Yes; AI-Inventors – No

July 2022

An AI cannot be an inventor for a European Patent Application finds the Board of the Appeal in their written decision on J08/20 that has now been published.

The appeal related to two applications filed as part of the Artificial Inventors project, which the applicant (Dr Stephen Thaler) claims relate to inventions made by his artificial intelligence system DABUS.

However, in the decision the Board explains that the EPC requires the designated inventor to be a person with legal capacity, noting that the ordinary meaning of the term inventor is “a person who invented a particular process or device or who invents things as an occupation”.

An argument that, in the case that an application relates to an invention without a human inventor the requirement to name the inventor may not apply, found some traction with the Board. However, in that scenario it remains necessary to provide a statement of origin of the right of the applicant to the European Patent. But, in the absence of any legal capacity of an Artificial Intelligence to own and transfer such rights, there is no way in which the rights in the invention could have been transferred from DABUS to Dr Thaler.

In common with similar decisions in other jurisdictions, the decision turns on an interpretation of EP patent law that an inventor must be a human. Indeed, the Board explicitly did not consider the question of whether an AI system is in fact capable of developing an invention without human direction and contribution, as claimed by Dr Thaler.

In further discussion, the Board indicated that it was unaware of any reason that would prevent a user of a device involved in an inventive activity to designate themselves as inventor under European patent law, highlighting that there remains no impediment to patenting inventions resulting from a process involving a human assisted by an AI.

Those following the progress of the DABUS applications will be aware that a similar outcome was reached by the Court of Appeal in the UK, which found that UK patent law requires an inventor to be the person who actually devised the invention and that therefore a machine cannot be an inventor. Further, a recent UK Government consultation on Artificial Intelligence and Intellectual Property concluded that no change was required to UK Patent law to allow for AI inventors, with many respondents believing that AI is not capable of inventing without significant human intervention, whilst also seeking to address any misperceptions that current law prevents the patenting of inventions made with the assistance of AI.

Applications made for the same inventions to the USPTO and Australian Patent Office have faced similar headwinds with the USPTO issuing a decision stating the inventorship under US Patent Law is limited to natural persons. An appeal to that decision is currently in front of the US Court of Appeals for the Federal Circuit. Despite some initial success at the Federal Court of Australia which found that an AI was capable of being an inventor, this has since been overturned at Appeal, bringing Australia into line with the situation in the US, Europe, and UK.

This leaves South Africa as the sole jurisdiction known to have issued a patent having an AI designated as the inventor. However, the absence of a formal definition of the term “inventor” in South African Patent law along with the lack of a substantive formal patent examination process may cast doubt on the broader relevance of the South African recognition of an AI as an inventor.

This article was prepared by HGF Patent director David Hufton

Latest updates

Event - 3rd-4th March 2023

LSPN North America Spring 2023

HGF are gold sponsors of the LSPN North America Spring 2023 in Boston on the 3 – 4th of May. Brought to you by Life Sciences Intellectual Property Review, this …

Event details
Event - 16th March 2023

Pro-Manchester Retail Lunch 2023

HGF is sponsoring the Pro – Manchester Retail Lunch 2023 on the 27th of April at The Bridgewater Hall in Manchester. Retailers have continued to face numerous challenges over the …

Event details

Fashionably IP Podcast Series 2 – exploring hot topics in the world of fashion and intellectual property

We are delighted to launch series 2 of our Fashionably IP Podcast where we will be looking at important hot topics in the world of fashion and intellectual property. In …

Read article
Event - 28th-29th March 2023

German Biotechnology days 2023

HGF Partner Dr Markus Zoller is attending and speaking at the German Biotechnology days 2023 on the 28th – 29th of March. German Biotechnology days is the go to event …

Event details
Event - 27th April 2023

Azets Yorkshire Food & Drink Business Awards 2023

HGF is sponsoring the Azets Yorkshire Food & Drink Business Awards 2023 on the 27th of April. The Awards aim to celebrate those businesses that have continued to excel and …

Event details
Event - 13th June 2023

Luxury Law Awards 2023

HGF is sponsoring the ‘IP Counsel of the Year’ award at the Luxury Law Awards on the 13th June in London. The Luxury Law Awards recognise the skills needed to …

Event details