March 3, 2020

Who’s the inventor in an AI developed invention?

The EPO (European Patent Office) refused applications EP 18 275 163 and EP 18 275 174 in which an AI system was designated as the inventor, following oral proceedings with the applicant in November 2019, on the grounds that they do not meet the legal requirement of the European Patent Convention that an inventor designated in the application has to be a human being, and not a machine.

In both applications a machine called “DABUS”, which is described as “a type of connectionist artificial intelligence”, is named as the inventor. The applicant stated that he had acquired the right to the European patent from the inventor by being its successor in title, arguing that as the machine’s owner, he was assigned any intellectual property rights created by this machine.

The decisions (which can be appealed) setting out the reasons for that refusal were published by the EPO on 27 January 2020.

In its decisions, the EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person, and that, in order to exercise his/her associated legal rights the inventor must have a legal personality that AI (Artificial Intelligence) systems or machines do not enjoy.

A question then arises with respect to which natural person is the inventor in an AI developed invention: the computer expert programming the AI, the science expert in the technical field on which the invention is based, an expert in a mixture of both technical fields, such as a chemo-informatics or a bio-informatics expert?

How to answer this question must be assessed on a case by case basis, because in some cases it is really hard to know if all the above mentioned natural persons have contributed to the invention.

For example, a powerful new antibiotic compound has been identified by MIT researchers by using a machine-learning algorithm. The compound was already known but not for the discovered new use, and was automatically picked up by screening more than 100 million chemical compounds in a matter of days.

In this case, it seems that it was the development of new predictive computer models that led to the discovery of the new use for the already known compound. However, people who thought that some of these known compounds might have a use as an antibiotic indeed contributed to the invention.

If this question is not clearly answered by providing appropriate assessment guidelines to determine which persons actually made an inventive contribution to this kind of AI inventions, both inventorship and entitlement disputes are envisaged.

Article by Joaquim Ferrer.