Written by Ezra Ponnudurai (Pupil-in-Chambers) and Nurul Natasha Madli (Pupil-in-Chambers), edited by Malvinderjit Kaur Dhillon (Associate) and Ameet Kaur Purba (Partner)
Confession of a Robot: I Invent therefore I am an Inventor
The Fourth Industrial Revolution brings new capabilities that not only involve humans but also machines. There is a constantmove towards automation of manufacturing and industry practices in line with the emergence of current technology advancements. Pursuant to this, the advancement of Artificial Intelligence (“AI”) technologies has led to AI machines being able to create its own invention.
As a result of AI, the burning question us humans are now asking and want answered is —can an AI system be named as an inventor? The Australian Federal Court in the case of Thaler v Commissioner of Patents [2012] FC 879 (“the Thaler case”) has ruled that an AI system can be named as an inventor in a patent application.
The legal community has been abuzz ever since the Thaler case decision and thus we have taken the opportunity to discuss the case in this article which is separated into two (2) parts: the first part (Part A) will be the introductory of AI and patent law in general. The second part (Part B) will analyze the decision of the Thaler case and its applicability in Malaysia.
Part A: Introduction
What is AI?
There is no solid definition of AI. In a nutshell, an AI can be categorized as a learning system, which combines computer science and robust datasets to enable problem-solving i.e. AI machines learns from input and data to develop capacity for reasoning, pattern recognition, usually without human input. Often, an AI is designed to mimic human intelligence to perform tasks.
Inventor and owner in a patent application
Prior to analyzing the Thaler case, it is imperative to understand the distinction between classification of an inventor and the owner of the patent. In a patent application, an owner and inventor can be two (2) separate entities. The patent owner is the entity that has the authority to file patent applications and take action in a pending application. Once the application is approved, the owner enjoys monopoly rights over the patented invention.
The inventor, on the other hand, has the option to be the applicant and/or owner of the patent, the inventor can also assign his/her rights to another entity. The most common example of assignment is where an invention is created in the course of employment, and the employee has assigned his/her rights to the company.
Issue with the concept of inventor and ownership of AI invention
In most jurisdictions, AIs are not recognized as an inventor in a patent application. The common reasoning is that the interpretation of the national patent law regime requires an inventor to be a natural person. Most refusing to acknowledge that an AI has the required autonomy to apply for the patent, maintain such patent and/or assign it to another entity. These concerns were addressed in the Thaler case.
Part B: The Thaler Case
The patent application
The Applicant, Dr Stephen Thaler, in conjunction with the Artificial Intelligence Project, filed a patent application for “food container based on fractal geometry”[1], and the “device and method for producing light that flickers rhythmically in a specific pattern mimicking human neural activity.”[2] However, the unique feature of said patent application is the fact that an AI called “Device for Autonomous Bootstrapping of Unified Sentience” (“DABUS”) is named as the inventor, not a natural person. The Applicant further claimed that “DABUS independently designed a fractal-shaped container for improved grip and heat transfer, and an emergency beacon that flashes more noticeably.”[3]
Initially, the Deputy Commissioner of Patents determined that the patent application did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth), which “requires that the applicant, who in this case is Dr Stephen Thaler [the Applicant], must provide the name of the inventor of the invention to which the application relates.” Thereafter, the Applicant sought judicial review of the decision by the Deputy Commissioner of Patents.
Decision of the Australian Federal Court
The Australian Federal Court set aside the earlier decision of the Deputy Commissioner of Patents. It was held that the Australian Patent Act does not specifically exclude non-humans inventors. The court further observed that ‘AI as an inventor is consistent with the Australian Patent Act’ as ordinary meaning of inventor as not excluding non-humans inventors is consistent with the objects of the Patent Act. The observation made by Justice Beach can be summarized as follows:
- There is no provision that expressly refutes AI as an inventor.
- There is no specific aspect of Australia Patent Law, unlike copyright law involving the requirement for a human author or existence of moral rights, that would drive the construction as excluding non-human inventors.
- The word ‘inventor’ is an agent noun, in which the suffix ‘or’ or ‘er’ indicates that the noun describes the agent that does the act referred to by the verb to which the suffix is attached. ‘Computer’, ‘controller’, ‘regulator’, ‘distributor’, ‘collector’, ‘lawnmower’ and ‘dishwasher’ are all agent nouns. As each example demonstrates, the agent can be a person or a thing. Accordingly, if an artificial intelligence system is the agent which invents, it can be described as an ‘inventor’.
- The Commissioner should have construed the Australian Patent Act in accordance with the newly inserted objects clause which requires the patent system to promote economic well-being through technological innovation.
- The Applicant received the title (i.e. assignment of the rights to the patent) by owning and control of DABUS.
It was further clarified that only a human or other legal person can be an owner, controller, or patentee, however, an inventor may be an AI system. As such, under Australian patent legislation, DABUS is the rightful inventor of the patentable invention in question.
AI inventor under the Malaysian Patent law regime
As patent law is territorial, the Malaysian Patent Act 1983 (“PA 1983”) is not identical to the Australian Patent Act. Similarly, foreign judgments (e.g. Thaler case) are not directly applicable in Malaysia. Therefore, there is a likelihood that a different reasoning will be reached by the Malaysian court.
An inventor is not defined under PA 1983, section 12 of PA 1983 merely defines an “invention” as “an idea of an inventor which permits in practice the solution to a specific problem in the field of technology.” One can use this as a basis for arguing that AI can be an inventor in a patent application.
However, section 18 PA 1983 provides that the right to application of a patentable invention belongs to the inventor. Where the applicant is not the inventor, there must be a statement justifying the rights to make the application for said invention (Regulation 10 Patents Regulations 1986). Even if an AI may be an inventor under the Act and/or Regulation, the patent officer or the Court will have to be satisfied with the justification that an applicant, who is not the inventor, has the right to the invention, i.e., how the ownership can be transferred from the AI to the applicant. Ultimately, whether an AI like DABUS can pass these hurdles are open for judicial interpretation.
Conclusion: Is AI taking over the world?
Not just yet; the patent law regime across the world will have to accommodate to the idea surrounding inventorship and ownership of AI-conceived inventions. The landmark decision of the Australian Federal Court has raised debates around the world to embrace AI inventions in patent applications. However, it still uncertain whether other jurisdictions will follow suit, including Malaysia. Will the Thaler case be first of its kind? It will depend on the outcomes of pending legal challenges at the UK Court of Appeal and other jurisdictions in Europe and the US (more information can be found here).
[1] pdfSource.do (ipaustralia.gov.au)
[2] Artificial Intelligence as the Inventor of Life Sciences Patents? | Proskauer – Life Sciences – JDSupra
[3] If Machines Can Be Inventors, Could AI Soon Monopolise Technology? – Liwaiwai
Should you have any questions on matters related to TMT, contact Head of TMT Suaran Singh Sidhu at suaransidhu@law-partnership.com