IP SPOTLIGHT OCT 23

Who may be granted a patent?

Meanwhile, the conversation has now made it to Australia following the national phase entry of one of Steven Thaler’s applications (AU2019363177). Currently, the application is subject to a formalities objection stating (perhaps unsurprisingly) the same position as in the UK – that the inventor must be a natural person. However, our review of the legislation has revealed that there is no such restriction in Australian law. In the following article, we review some of the issues around this push for recognition of non-human inventors.

According to s15(1) of the Patents Act:

– – Subject to this Act, a patent for an invention may only be granted to a person who: a. is the inventor b. would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person c. derives title to the invention from the inventor or a person mentioned in paragraph (b) or d. is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c). (emphasis added). It is clear from the preamble of s15(1) which clearly references “a person”, that, even when the Applicant is the inventor, the Applicant must indeed be a legal person as defined under s2C of the Acts Interpretation Act (i.e. that being a body politic or corporate or an individual). However, ‘inventor’ is not defined in the Patents Act, and Reg 3.2C(2)(aa) only requires that the inventor be named on the application. There is no explicit reference to whether an inventor must be a person: natural, legal or otherwise; only that when the Applicant is also the inventor, the Applicant must be a person. We expect that this possible loophole in the legislation will be emphasised during prosecution of Thaler’s Australian application. When the Applicant is not the inventor, Applicants (including corporations) usually acquire rights from the inventor by legal succession, e.g. through their employment contract or assignment. Where there is no express term in an employment contract, ownership can become controversial. In many jurisdictions, Applicants are required to file an assignment showing that the inventor/s have formally assigned their rights to the Applicant. In Australia, an explicit statement or notice asserting how the Applicant gained entitlement to the invention from the inventor is usually sufficient. A notice of entitlement can be in a generic form. For example, the requirement is satisfied by a notice in the form: “I/We, state that the applicant (or each joint applicant) is an actual inventor, or derives title to the invention from an actual inventor(s), or would, on the grant of the patent, be entitled to have the patent assigned to them. Who may be the Applicant?

THE LAW ON ‘ I NVENTORSH I P ’ AND ‘OWNERSH I P ’

Inventorship

The requirement for inventorship differs from jurisdiction, but many jurisdictions require that the inventor be a natural person. Article 4.A.(1) of the Paris Convention for the Protection of Industrial Property states that ‘[a]ny person who has duly filed an application for a patent … in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority…’. Article 4.A(1) further provides that ‘the inventor shall have the right to be mentioned as such in the patent.’ (Emphasis added). When read more closely, there is no written requirement that the ‘inventor’ actually be a natural person, only that the Applicant be a “person”. Unlike the UK, this also appears to be the current legislative position in Australia. (We note that corporations may be an Applicant due to their statutory status as a legal “person” under the Acts Interpretation Act 1901 and as such they do not form part of this discussion). A number of commentators have formed the view that it is inherent in these provisions that inventors are people, especially given that, when the Paris Convention was adopted in 1883, no one would have ever considered that computers would take over the world the way that they have. We also note that we are not aware of any patent application where a corporation has been listed as an inventor, despite their status as a legal person. In our view, who an inventor may be (or may not be) really has not been made clear in the legislation, thus leaving this term open to interpretation.

IS ARTIFICIAL INTELLIGENCE REALLY INTELLIGENT?

The latest debate – can AI “invent” something? Or is it just following standard protocol?

and ignited debate on whether or not a patent can be granted for an invention generated by an AI system.

THE DETA I LS The Artificial Inventor Project, which is behind the DABUS applications, has been contentiously advocating for AI to be named as an inventor through the patent system (as opposed to through legislative changes). This discussion began in the UK where, as it currently stands, an inventor must be a natural person. This position was affirmed by the UK patent office and also in the English High Court, which was the first judicial consideration of issues relating to machine inventorship. Similar appeals are afoot in the US and the European Patent Office (EPO).

SUMMARY With the increasing reliance on computerised systems and processes, the term ‘artificial intelligence’ (AI) is now a part of everyday vocabulary. But does anyone really understand what it means? And is AI really intelligent as the name may suggest? Recently, two Australian patent applications were filed naming an AI system called ‘DABUS’ as an inventor; and its creator, Steven Thaler, as the Applicant. These applications have forced us to reconsider what an ‘inventor’ really means,

Regardless of where you sit, this topic is now open for debate.

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