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Artificial Intelligence and the Patent Regime

The World Intellectual Property Organisation (WIPO) defines intellectual property (IP) as a creation of the mind. Patent, is a type of IP, provides an incentive to individuals to invent and innovate. The patent holder/owner is given exclusive right to make, use, sell and export an invention for a specific period of time.

With the advent of technology, and artificial technology (referred to as AI hereafter) per se, the world has seen a substantial increase in the number of inventions and technologies, created with the help of AI, owing to its potential to increase productivity and efficiency, as compared to its human counterpart. This is apparent from the fact that between 2010 and 2016, there was a fivefold increase in the number of patent applications relating to AI techniques as compared to scientific publications by tech giants like IBM, Microsoft, Hitachi, Panasonic, Samsung, Siemens etc.[1]

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The interplay between AI and patent law has two implications, the first one relates to the patentability of AI itself, and the second one relates to the patentability of inventions created by the use of AI.

The issue of patentability of Artificial Intelligence

Generally, patentability of any invention is subject to certain conditions, which include novelty, industrial application and patentable subject matter. Certain jurisdictions completely prohibit patenting computer programme or algorithms[2] because they come under the exclusive domain of copyright protection[3]. However, in other jurisdictions, software and computer programmes are patentable, but only if they fulfil specific conditions. For example, in China, software invention needs to fulfil the technicality requirement[4]. Similarly, in the United States of America, traditionally patent protection was not provided to software as they were considered abstract ideas, which was outside the purview of USA’s patentable subject matter under the Patent Act, 1977. However, this bar against patenting software was removed by the Court in Alice v. CLS Bank[5] which held that abstract idea implemented on a generic computer may not be patented, but, if the software in question improves “computer functionality” (i.e. improves computing speeds or reduces the number of computing resources required), or performs the computing tasks in an unconventional way, then it may be patentable.

Therefore, it can be seen that the issue of patentability of AI per se differs from jurisdiction to jurisdiction, wherein few nations are more willing to provide patent protection to certain types of software, while others continue to bring it under the exclusive domain of copyright protection.

The issue of patentability of inventions created by artificial intelligence

Artificial intelligence, in the past decades, has played a major role in assisting humans by performing certain specific tasks, assigned to them, by means of algorithms set by humans. This process also inculcates the use of AI in creating innovations and inventions. However, the way in which AI aids in the creation of such invention, differs. Broadly, there are three ways in which AI can play a role in creating inventions. At one end, AI could simply act as a tool in assisting a human inventor without contributing to the conception of an invention. On the opposite side of the spectrum, as AI is not bound by the limits drawn to it, it could autonomously generate outputs that would be patentable inventions, if created by a human. Alternatively, AI could also fall in between these two extreme ends, for example, it could be used to generate several possible solutions under the guidance of humans who define the problems and select successful solutions.

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The legal regime governing the patent system in different jurisdictions highlight that there is no bar to granting a patent for an invention created or generated by an AI. However, such invention would nevertheless have to satisfy the statutory requirements for being eligible for patentability i.e. novelty, industrial application and patentable subject matter. However, the issue arises at the time of filing a patent application.

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Before understanding the issue, it is important to understand the concept of inventorship and ownership. Inventorship is determined by “conception, or the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.”[6] Ownership, on the other hand, lies with someone who exploits the commercial benefits arising out of such invention. Further, patent ownership is generally tied to inventorship, unless another entity has a superior right, such as through employment or contract. Therefore, since the invention is a creation of the mind, and encompasses certain rights and liabilities, all the jurisdictions around the world unanimously agree to the fact that an inventor can only be a natural person/s and not even an artificial person. Further, with respect to ownership, it is considered that both a natural person and an artificial person, like a company, can have ownership rights over the invention.

Taking into account the developments in the field of AI which now enable it to autonomously generate new inventions, serious concerns can be raised about whether AI can be termed as an “inventor”. Recently, both Google and Facebook have seen their respective Al systems develop new languages to perform the assigned tasks, eschewing known human languages in favour of a more efficient one.

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Let us consider the situation where an invention is generated autonomously by an AI (the one side of the spectrum). If such AI is considered the inventor, then by virtue of being an inventor and not being bound by a formal contract of employment, it also becomes the owner of such invention and possesses the rights to sell its invention to other natural persons/companies for profits. However, does AI has the capacity to negotiate terms for commercial purposes and provide consent for such transactions. It should also be borne in mind that the entire premise of the patent is based on the very idea of commercial exploitation of invention for a limited period of time. This provides an incentive for innovation and inventions. Therefore, if the idea of commercial exploitation is subtracted from patent, what remains is charity, and charity does not drive investments into further inventions by the use of AI. This is the very reason why the courts in different jurisdictions are reluctant in interpreting “inventor” as to include AI[7]. Such a step would create a lacuna with respect to firstly, the practical implications of such step, secondly, the idea of incentive under the patent regime and lastly, the issue of attributing rights to AI and liability, in case of any dispute. This situation is beautifully highlighted by the recent case[8] wherein Stephen Thaler applied to the patent offices of the United Kingdom, Europe and the U.S.A. for patentability of an invention invented by the AI machine “DABUS”. Mr. Thaler mentioned “DABUS” in place of the name of the inventor and his name in place of the name of the owner. The patent offices of these jurisdictions rejected this application on the ground that an AI cannot be an inventor as the statutory requirements mandate inventor to be a natural person, and that AI can neither be employed (as Mr Thaler mentioned himself as owner stating that DABUS is his property), nor hold intellectual property rights. Therefore, the situation with respect to the patentability of inventions created solely by AI is clear, i.e. AI cannot be an inventor under the law.

When we consider the situation wherein AI acts just as a tool or plays a more active role in the process of innovation and invention, certain scholars believe that AI could be considered as a co-inventor. However, mentioning the name of an AI as an inventor in the patent application would also be futile as the courts have come to the conclusion that only a natural person can be an inventor.

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However, having said that AI cannot be considered as an inventor, it does not imply that the creation of AI cannot be patented. To address this issue, one of the theories propose that the owner of the AI which created an invention should be considered as the inventor of the inventions created by AI which it owns. However, such patentability would still be subject to the statutory requirements of different jurisdictions. This theory implies that AI is just a mere tool or machine which aids humans to perform specific functions. Since the actions of the AI are prompted by humans, such humans should be considered the real “mind” behind any innovation created by such AI, while performing its functions. This theory seems to work perfectly well as it solves the issue of the inventor being a natural person, the issue of attributing liability, and the issue of negotiating for commercial purposes. This would also imply an increase in investment in AI for creating more of such inventions, in which the owner of such AI is considered the inventor of such invention.

[1] Pankaj Soni, How Is the Patent World Responding to the AI Revolution, 281 MANAGING INTELL. PROP. 48 (2019).

[2] Like Indian Patent Act, 1970, s. 3(k).

[3] Trade related aspects of Intellectual Property Rights, Art. 10 [Source or object code, shall be protected as literary works under the Berne Convention (1971)].

[4] PATSNAP, (last visited Jan. 29, 2021).

[5] Alice v. CLS Bank Int’l, 573 U.S. 208, 225-26 (2014) [Holding that “the abstract idea implemented on a generic computer” may not be patented]

[6] Townsend v. Smith, 36 F.2d 292, 295; Hybritech Inc. v. Monoclonal antibodies inc., 802 F. 2d 1367, 1376.

[7] New Idea Farm. Equip Corp. v. Sperry Corp., 916 F.2d 1561 (Fed. Cir. 1990) [The court stated that only people conceive ideas and not machines].

[8] Stephen L Thaler v. The Comptroller-General of Patents, Design and Trade Marks, [2020] EWHC 2412 (Pat).

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