Artificial Intelligence and Intellectual Property – Where are we now?
To celebrate Innovation Day, our Patent Attorney, Dr Alex Povey summarised how Artificial Intelligence and Intellectual Property are connected at Avidity.
What is Artificial Intelligence?
Artificial Intelligence (AI) relates to computer systems which are capable of performing mental acts and tasks which would normally be the preserve of the human mind. For example, learning and reasoning. Although AI was recognized as a concept since the 1950s, only in the last decade has AI had a major impact on our daily lives. For example, voice and facial recognition systems are now commonplace on our smartphones. “Smart” implying the device or system has cognitive abilities independent of a human operator.
But, is AI Patentable?
How is AI treated from a perspective of patentability? The European Patent Office (EPO) treats AI-related inventions as “computer-implemented inventions” (CII). The European Patent Convention (EPC) is clear – for CIIs, the program for the computer is not itself regarded as a patentable invention (Art. 52(2)(c) EPC). Similarly, the mathematical models which provide the basis of AI are excluded from patentability (Art. 52(2)(a) EPC). However, an invention which involves the use of computer programs and mathematical models. For example, an AI-controlled device may be patentable provided that it achieves a “technical effect”. It provides a technical solution to a technical problem and is novel and inventive. Therefore, inventions which make use of AI to achieve a technical objective may be patentable even though the algorithms and software are not.
How the EPO treats AI
The EPO does not distinguish between “conventional” computer-related and AI-related inventions in terms of patentability. However, the fact that AI systems have cognitive abilities independent of human intervention inevitably leads to question:
If an AI-based system can learn and reason independently of human intervention, can it also invent?
Is it possible that an AI-based system could identify a technical problem and propose a technical solution?
The EPC makes clear that the inventor (or the successor in title) also owns the patent to the invention. Therefore has the right to enforce or license or assign the patent as he or she chooses (Art.60(1) EPC). That being the case, how can an AI-based system exploit the rights in a patent?
The EPO commissioned a study1 which concluded that “…currently none of the [relevant] jurisdictions allow for AI systems to be considered as inventor under their patent law regimes…”. The study highlighted two key reasons: (i). the term ‘intelligence’ should carry its normal meaning as in ‘conscious’, ‘self-aware’ and ‘volitional’, and (ii). inventorship serves as a starting point for an enquiry as to entitlement and hence the right to enjoy the benefits arising from ownership of the patent.
Can a patent be filed with Artificial Intelligence as the inventor?
There is, however, a real-life example of an attempt by an applicant to have an AI system recognised as an inventor. European patent applications EP18275163 and EP18275174 were filed by Dr. Stephen L. Thaler. In both cases, Dr. Thaler submitted that the inventor was an AI-based system called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience). Corresponding applications were filed at the USPTO and UKIPO. The EPO Legal Board of Appeal2, the UK Court of Appeal3, and the US District Court for the Eastern District of Virginia4 all held that an inventor cannot be an AI machine but must be a human being.
So what does this mean for the future?
AI is a disruptive technology. It is axiomatic therefore that the number of patent applications related to AI will continue to increase. However, as is often the case with rapidly developing technologies, the relevant law is slow to catch up. In the short-term, AI-related inventions are likely to be treated as other computer-implemented inventions before the EPO, but the need for discussion as to how future AI-related inventions fit into the existing legal structure and to what extent the law needs to be modified not just with respect to patents but to other forms of intellectual property is undoubtedly recognised5,6.
- A Study on Inventorship in Inventions involving AI Activity, Dr. Niam Shemtov, Centre for Commercial Law Studies, Queen Mary University of London (February 2019)
- J8/20 and J9/20 (21 December 2021)
- Thaler v. Comptroller General of Patents Trade Marks and Designs  EWCA Civ. 1374 (21 September 2021)
- Stephen Thaler v. Andrew Hirshfeld, 1;20-cv-903 (LMB/TCB) (2 September 2021)
- UKIPO-WIPO Conference, Keynote Speech, Lord Kitchin, Justice of the Supreme Court (18 June 2019)
- UKIPO Consultation on Artificial Intelligence and Intellectual Property: copyright and patents (now closed). Link below:
Artificial Intelligence and Intellectual Property: copyright and patents – GOV.UK (www.gov.uk)