The benefits and pitfalls of creating productive AI inventors

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This article was contributed by William H. Honaker, IPR Specialist and Lecturer at IP Guy.

Can AI be the inventor of a patent?

The American judge says “no”, while others consider it a “maybe”.

Artificial intelligence (AI) has had a profound impact on our society in recent years, but it has been around longer than you may realize. Many people attribute the beginnings of AI to a paper written in 1950 by Alan Turing entitled “Computer Machinery and Intelligence.” However, the term artificial intelligence was first invented in 1956 at a conference held at Dartmouth College in Hanover, New Hampshire. Since then, interest in artificial intelligence has faltered. Its latest resurgence can be attributed to IBM’s Deep Blue chess supercomputer and its question-answering machine Watson. Today, artificial intelligence is a part of our everyday lives – from face recognition technology and sharing apps to smart assistants. It is also at the forefront of the driverless vehicles of the future.

As AI becomes more and more intelligent, it raises the question – should AI machines be able to patent their inventions?

At the heart of this debate is Stephen Thaler and his AI computer DABUS (“Unified Science Startup Device”). Unlike regular AI like Alexa and Siri, DABUS is a unique type of AI that is often referred to as a “creativity machine”, meaning that it is capable of functioning independently and complexly. As such, it is named as the sole inventor on two patent applications filed in several countries. One invention is for a food container and the other for an alarm light. This has resulted in a worldwide legal battle and debate over how to handle computer-generated innovation.

Thaler claims that he did not instruct the machine to invent these products. Instead, he said DABUS analyzes data, generates ideas and invents products. Since Thaler was not involved in the process of inventing these products, he believes that DABUS should be mentioned as the inventor. However, he says he should own the patent rights because he owns DABUS.

Patent applications were rejected in the United States, England, Europe and Australia on the grounds that only people can apply for patents. The High Court of England upheld the UK Intellectual Property Office’s decision to withdraw the applications on the same basis. The court also ruled that the patent could not be transferred to Thaler.

However, Thaler was recently upheld in an appeal to the Federal District Court of Australia. That court found that Australian law does not require a human inventor – only an inventor. The judge said the definition of an inventor was ambiguous and did not exclude machines. Thaler also succeeded in obtaining a patent in South Africa. However, this may be less important because South Africa does not process patent applications, which means that all South African patent applications will be granted without scrutiny to see if the requirements are met.

The decision of the US Federal Court

Thaler appealed the decision of the United States Patent Office (USPTO) to the Virginia Federal Court, which ruled that the USPTO was correct. The court found that patent law explicitly defines “inventor” as an individual. Although patent laws do not define “individual”, the courts as well as the general meaning of the term define an individual as a human being. Therefore, an inventor must be a human being.

Thaler’s arguments were primarily based on political considerations. He argued that preventing AI from being named as an inventor would discourage innovation. The court replied that political considerations were not made by the courts; it is solely Congress that decides.

Did Thaler have the opportunity to obtain patent protection?

Yes – he could have signed up in his own name. Thaler, however, claims he could not because he did not invent anything. But he probably did. He created DABUS and programmed it to invent. It is analogous to a camera. A camera takes the picture, and in many situations the photographer simply presses the button. The camera on automatic settings does the rest. With a mounted, motion-activated camera, the photographer does not even press the button. The resulting image is copyrighted and the person who set up the camera is the owner of the copyright.

There is no doubt that the analysis is different for who to name as the creator of a copyrighted work and the inventor of a patent – it is important to name the inventors correctly as it can have consequences if one does not. But it can be argued that Thaler should be called the inventor of both the food container and the alarm light. He programmed the AI ​​and turned it on with a predetermined purpose – he ran the process. The U.S. Patent Office even suggested that Thaler name himself the inventor.

Who would own a patent with an AI inventor?

Who owns the patent? Or to ask differently, who gets the money in this scenario?

In the matter of ownership, the inventor owns the patent, unless it is assigned, or the inventor was one employee and obliged to transfer ownership to an employer. It certainly raises questions in my mind about potential coercion from Thaler. Like HAL said AI from the movie “2001 A Space Odyssey,” famously: “I’m sorry, Dave. I’m afraid I can not do that.” As Thaler can answer, “Sign, or I’ll pull you out!”

As noted by the court, Thaler transferred the rights to any resulting patent to himself and signed the transfer on behalf of DABUS. He stated that this was appropriate as DABUS has “no legal person or capacity to execute the said agreement”. These attitudes appear to be inconsistent. DABUS may be an inventor, but may not own the invention. The patent court is aware that the inventor owns the patent unless he transfers his rights. Thaler stated in the agreement that “rather, the owner of DABUS, Creativity Machine, signs this assignment on its behalf.” There is no exception in patent law for the “owner of the inventor” to be the owner of the patent.

Copyright law is the same – only humans can have copyrights, even when AI is the inventor

There is a federal lawsuit that has already ruled that animals cannot get copyright. The court based its decision on the fact that Congress did not specifically prescribe that an animal could obtain copyrights. Nor did Congress make sure that AI was an inventor.

The case involved photographer David Slater and a group of Celebes crested macaques. Slater traveled to Indonesia and became friends with a group of wild macaques. He set up camera equipment to take their pictures. Macaques, who were friendly and curious, picked up the cameras and took selfies. The pictures were so good that Slater published them in a coffee table book.

People for the Ethical Treatment of Animals (PETA) sued Slater, claiming that the macaques had pressed the camera button and therefore the authors and the owners of the copyright and should receive all proceeds from the book. Since most macaques do not have bank accounts, PETA volunteered to manage the funds on their behalf. The Ninth Circuit Court of Appeals ruled that animals cannot own a copyright and that only humans can be discharged.

Copyright Office was more specific. It will not register a copyright to a work created by a non-human. The Examiner’s Copyright Guide states that only works created by a human being can be copyrighted, and states that “in order to qualify as a work of ‘authorship’, a work must be created by a human being. Works that are not meets this requirement is not copyrighted. “

With regard to machines, the guide specifically states, “Similarly, the office will not record works produced by a machine or purely mechanical process that works randomly or automatically without the creative input or intervention of a human author.”

In other words, DABUS does not have to apply.

Man and machine

For most of us, this is a matter of interest, and it is unlikely to affect us directly. Not yet at least. But as AI continues to evolve, this issue will become more important. As more artificial intelligence “invents”, they can become the productive inventors of the future. If AI can not be inventors, then AI inventions will be freely available to the public. Also if patents is given who will get the reward? The owner of the inventor AI?

The battle between man and machine continues – and with AI constantly replacing humans, it seems to be winning the war. One day, they may even replace Congress. If that happens, so will the ability to be named as an inventor. But will we humans at all worry at that point?

Whether AI can be an inventor is just another chapter in the ever-evolving story. People, stay tuned.

With more than 30 years of experience in the legal industry, Dickinson Wright’s William H. Honaker has extensive knowledge and expertise in all aspects of patent, trademark, trade secret and copyright issues, including litigation in a wide range of technologies / industries. Connect with him LinkedIn, email him at, and see more IP insights.

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