Updates on DABUS and Inventorship of AI-Generated Inventions

On Monday February 3, I had the opportunity to attend the Future of Intellectual Property Rights: A Fireside Chat organized by Deeth Williams Wall LLP. It was thrilling to learn about the unfolding of the DABUS Case on recognition of artificial intelligence systems as inventors, as I was left with many questions at the end of my IPilogue article in October.

Just to recap, in August 2019, Dr. Ryan Abbott and his team announced two international patent filings for “AI- generated inventions”. This raised the question whether current intellectual property systems can deal with the questions of inventorship where the inventor is not a traditional “natural person”.

The European Patent Office (EPO) and United Kingdom Intellectual Property Office (UKIPO) have already evaluated the patent applications and held that the applications met the requirements of patentability to the extent possible prior to the publication of the applications. The UKIPO Hearing Office accepted that DABUS created the inventions in the patent applications but could not be regarded as an inventor since it was a machine and not a natural person, referring to the Article 81 and Rule 19 of the European Patent Convention.

Though the AI inventor itself cannot hold property, Dr. Abbott makes convincing arguments for why patent protection for AI-generated inventions is necessary. He argues that patent protection should be available for AI-generated works as it will encourage more innovation for society. Incentivization of innovation will not directly flow from motivating AI programs to create more inventions, but it will come as commercializing AI-generated inventions cause people and companies to increasingly develop, own, use, and invest in AI. Moreover, since patents promote the disclosure of information to the public, patents for AI-generated works will also increase this socially valuable information disclosure. Dr. Abbott also argues that allowing AI to be recognized as an inventor protects the integrity of patent systems as it creates factual and honest declarations, as it is unlawful to make false statements for claiming ownership for something that a person has not himself or herself created.

If we recognize AI systems as inventors, there will be some very interesting novel challenges pertaining to how AI as an inventor may change the current non-obviousness requirement for patents. For instance, Dr. Abbott further claims that we will have to rethink and reformulate the patent standard of the “person skilled in the art” (POSITA). The obviousness  test requires one to ask if an average person skilled in the specific art would find a patent application obvious in the light of existing prior art and relevant information. If the POSITA finds it obvious, then the patent will not be granted. Applying this to AI inventors which have knowledge and capabilities exceeding  any human researchers, any invention can be obvious. Hence, this may require changing the test for obviousness step.

These novel challenges for current intellectual property systems around the world will define the future of innovation. Possible reforms can be made by creating novel intellectual property protections for these inventions or by modifying current standards. Dr. Abbott argues for the principle of legal neutrality, which means that law does not discriminate between human inventors and AI. I personally believe that granting AI systems patents for their inventions by means of granting them the  “inventor” title should be assessed on a case-by-case basis basis, considering the invention’s degree of complexity and the autonomy possessed by AI systems in the innovation process. This can better protect public interests and prevent patent monopolies in the hands of the AI giants of the Silicon Valley companies.

Written by Elif Babaoglu, Contributing IPilogue Editor and JD Candidate at Osgoode Hall Law School with a strong interest in AI and law. Elif is also the co-director of events at the Osgoode Privacy Law Society.

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