AI inventors at the UKIPO and EPO
15th September 2020
Both jurisdictions have now published their detailed reasoning, and we can take a look at what led to these decisions. As there is nothing explicit regarding the nature of the inventor in either the European Patents Convention (EPC) or the UK Patents Act, the two jurisdictions have reasoned this in different ways, ultimately coming to the same conclusion: an inventor must be a natural person.
The two applications were filed with the name of Dr. Thaler as the applicant. The machine DABUS was identified as the inventor, and Dr. Thaler stated that the applicant derived the right to be granted a patent for the invention by virtue of ownership of the machine.
The EPO noted that various national courts have issued decisions supporting an interpretation of the term inventor as referring to a natural person, and that this therefore appears to be an internationally accepted principle.
It is compulsory to designate the inventor of a patent application, and that status has certain legal rights attached to it which require a legal personality to exercise. A legal personality is something that a machine does not have, and the EPO stated that giving a name to the machine does not overcome this issue.
It appears from the online files that, not surprisingly, the applicant has appealed this decision.
The hearing officer at the UKIPO did not dispute that DABUS invented the application, as that is not the role of the patent office. However, it was held that non-human inventors were not contemplated when both the EPC and the UK Patents Act were drafted, and there is therefore a clear expectation that the inventor was a natural person and not a machine. The hearing officer concluded that a machine could therefore not be regarded as an inventor.
The hearing officer also considered whether the applicant could derive the right to be granted a patent. They considered that a machine cannot hold property, and so could have no rights in the invention and could not enter into a contract to assign property.
The applicant’s argument that he derived the right through ownership of the machine was not found persuasive, as there is no law that enables transfer of ownership from a machine to a person. Hence, even if DABUS could be recognised as the inventor, there is no mechanism by which it could transfer rights to the applicant.
There is a feeling when reading these decisions that the offices know what they want, and that is human inventors, and in the absence of specific provisions in the relevant patent law they are pushing to keep the status quo. However, this issue is not going to go away. Dr. Thaler has already appealed the EPO decisions, and we expect the same to happen in the UK, and it will be interesting to see the angle that the higher courts take. One of the interesting features of the decision by the UKIPO is the wider point that this issue isn’t limited to the designation of inventor; if there is no mechanism in law by which a machine can hold property and/or assign property to another party then, even if an AI machine were to be recognised as an inventor, there is no way in which a human applicant can obtain the right to apply for a patent from the AI machine.
Author: Katherine Wright
CJEU rules that "pay-for-delay" agreements may be anti-competitive
24th August 2020
“Pay-for-delay” agreements have been considered by the CJEU for the first time in the case Generics UK vs Competition and Markets Authority (CMA), with the CJEU ruling that such agreements may contravene competition law.