In-house counsel have expressed surprise at an “under the radar” update by the UKIPO on whether AI can be named as an inventor – though they say the practical implications will be limited at this stage.
Counsel in the optical products, automobile and pharma industries say they are some distance away from patenting AI-led inventions but have questioned the UKIPO’s decision to publish the update now.
The update also throws open the debate of who should be named as an ‘inventor’ under patent law and how businesses should react, they say.
AI patent law
Last week the UKIPO updated its formalities manual for patent examiners by adding the following sentence: “An ‘AI inventor’ is not acceptable as this does not identify ‘a person,’ which is required by law. The consequence of failing to supply this is that the application is taken to be withdrawn.”
The law in question is the Patents Act 1977. The UKIPO previously indicated that it was ready to respond to the challenges posed by AI after two patent applications that named an AI system as the inventor were filed.
The applications, by two professors at the University of Surrey, name an AI system called Dabus as the inventor. The Dabus applications, filed at the UKIPO, EPO and USPTO, are for a new type of beverage container based on fractal geometry and a device for attracting enhanced attention that may help with search and rescue operations.
Both the EPO and the USPTO, along with the UKIPO, stipulate that an inventor must be a ‘person’. However, the applications are still pending and none of the offices has yet commented publicly on them.
Speaking to Managing IP, a patent counsel at a multinational optical products company, says the UKIPO’s decision to update the manual was probably spurred by the Dabus applications.
The counsel adds: “Our business is a long way off an application of this sort. We do have inventions that use AI (medical images) but AI as an inventor is not on the horizon.”
A patent attorney at a global life sciences company agrees. “It seems likely that the update was at least partly in response to the attempts to have Dabus named as an inventor,” they say.
Ryan Abbott, professor of law and health sciences at the University of Surrey and one of the professors who filed the Dabus applications, says the update “appears to hint at a new policy” from the UKIPO that “suggests it is not sympathetic to listing AI as an inventor”.
He notes, however, that the law is changing fast in this area and that the USPTO is seeking feedback on AI-related inventions. “We will continue to make representations that listing AI as an inventor is the right course to take,” he says.
Abbott predicts that there will be a minimal material impact on corporations if the UKIPO determines that AI can be named as an inventor.
“They [corporations] will always be more interested in obtaining their patent and a lot less interested in who is listed as the inventor,” he says.
“The inventor is not the same as the patent owner, and that’s an important distinction. It’s not fair to say someone is an inventor purely because of the programming they have put into a system; you can always train someone to do something.”
Abbott’s view is echoed by pharma company attorney.
“Many of the legal issues of AI inventorship are irrelevant in view of the fact that it is the applicant, not the inventor, who owns the patent application,” they say.
“We, and I imagine other large corporations, are going to be primarily concerned with who has the right to the application,” they add, saying that the UKIPO update is a “clarification to formalities officers that they can refuse an application on the grounds of a lack of inventor”.
The executive patent consultant at a global automobile company agrees. “I don’t see the advantage of naming an AI as an inventor as anything other than a publicity stunt.”
The UKIPO declined to comment but Managing IP understands it has yet to make a formal decision and that the update to the manual is not binding.
The optical products counsel notes that the update was made without much fanfare. “The UKIPO is normally aware of IP issues and quick to capitalise on them and announce them to the press, so I was surprised they did not make more of this,” they add.
Who is the inventor of AI?
Abbott says that although the laws are designed to reward human inventors, the concept of invention is diluted if a patent can be awarded in situations where the invention was predominantly created by a machine.
However, the counsel at the optical products company says it may be tricky to determine exactly who an inventor is.
For products that are largely a result of AI-implemented technology, it could be difficult to determine who the inventor is, they note. An applicant could name the person who instructed the AI but technically that person may not qualify as an “inventor,” they say.
However, the pharma company attorney does not think this will be a problem.
“AI is merely a tool, like another platform technology, that may give rise to inventive subject matter after a natural person has put the circumstances in place,” they say.
They note that for designs, the UK Registered Designs Act stipulates that the author is the person who “made the arrangements necessary for the creation of a computer-generated design,” and that the same could apply to patents.
“It seems the UKIPO has now confirmed that the question of AI inventorship does not have sufficient ethical, legal or practical merit to prompt a change.”
The patent consultant at the automobile company agrees. “As far as the ‘AI inventor’ question is concerned, my attitude has been that whoever set the machine in motion to create the invention is the inventor,” they say.
“A person is essentially causing a machine to perform actions that result in an invention, even though that person may not have personally contributed to ‘devising the invention’ in a strict traditional sense.”
They add, however, that a “little fine-tuning” of the rules might help, noting the provisions in the Designs Act.
The pharma company attorney adds that the EPO and the UKIPO do not investigate inventorship, but instead take it on face value to be true, so the person who filed an application would be unlikely to encounter many difficulties.
Nevertheless, the counsel at the optical products company says that applicants should err on the side of caution and try not to name a non-human inventor.
One method to get around this could be to list their company or the AI owner as an inventor and attach a ‘care of’ note that names a person.
The consultant at the automobile company says this could be an option but that it may be “open unknown territory”.