IP SPOTLIGHT OCT 23

“ The fundamental problem with AI is fairly simple: despite the massive processing capacity of AI, in every case, a finite number of input parameters is converted during processing into a corresponding and finite number of output parameters based on a specific set of algorithms, pre-programmed by a human. ”

So if AI is the inventor of a patent, this raises two very important questions:

– – does AI have the capacity (and the right) to assign a patent to a person? – – can a person (or corporation) be entitled to derive title to an invention from AI? Although under Australia law a written assignment is not strictly necessary in all circumstances, s14(1) of the Patents Act stipulates that: Given that s15(b) essentially requires that the Applicant, on the grant of a patent for the invention, be entitled to have the patent assigned [to them], it is clear that the possibility of an executed Assignment existing at some stage must be a real one. On face value, it would seem to be the case that AI is not capable of signing such an Assignment document. However, even if AI was somehow physically capable of signing the document, would AI understand what it was that it was signing? Which then raises the issue of informed consent. Regardless, is it even legal for AI itself to hold property to then assign? Turning to question 2, is the creator of the AI somehow entitled to automatically derive title to the invention from the AI? We believe that, absent of any legislative guidance, the answer to that question may depend, in part, on whether or not the AI would be considered an ‘inventor’. I S A MACH I NE CAPABLE OF ENGAG I NG I N ‘CREAT I VE’ OR ‘ I NVENT I VE’ ACT I V I TY? Legally, we believe it will be very challenging to win the argument that AI can be an inventor, especially in jurisdictions where inventorship is clearly restricted to natural persons. In most jurisdictions, we imagine that changes would be needed at the legislative level, rather than in court, before AI’s will be considered inventors. However, this push has ignited a debate on the topic in several jurisdictions, including the World Intellectual Property Office (WIPO), who called for submissions on the topic from the public in February 2020. Unless legislative changes are made to allow AI to be an inventor, we consider that the current debate will revolve around whether or not a computer, following only the algorithms pre-programmed into it by a human, can be said to demonstrate ‘invention’ or ‘creativity’. An assignment of a patent must be in writing signed by or on behalf of the assignor and assignee.

If AI cannot invent, and yet AI can generate an invention, who then, if anyone, is the inventor? Is it the person who built and programmed the AI? We find this challenging to accept since that person technically did not arrive at the invention directly using their own intellect. In addition, any provision in the legislation to ‘derive title’ to the invention under s15(c) requires that the Applicant derives title to the invention from the inventor . If AI is not an inventor under our current understanding of the term, then no title can be derived therefrom. Therefore, in our opinion, as it currently stands, the creator of the AI can be neither the inventor nor the Applicant. This debate has ignited several legal and philosophical debates and has raised more questions than it has answered. Whilst it is possible that one day, policy may allow for a non-human inventor, it is clear from the various world-wide reactions that first impressions are against this idea. However, how this plays out in Australia is yet to be determined. Whilst there appears to be no legislative provision in Australia preventing AI from being an inventor, we are of the opinion that even if this is acknowledged at the office, it will still be challenging to argue that (1) AI has inventive capacity and (2) also has the ability (and legal right) to assign its invention over to a third party. As such, we believe that this will ultimately be resolved at the policy level, not in the court system.

Under Australia law, the issue of inventive step is whether or not, in light of the common general knowledge and/or the prior art, it would have been obvious to the person skilled in the art to arrive at the invention as claimed. The word “obvious” suggests that it does not go beyond the normal progress of technology, but merely follows plainly or logically from the prior art. The fundamental problem with AI is fairly simple: despite the massive processing capacity of AI, in every case, a finite number of input parameters is converted during processing into a corresponding and finite number of output parameters based on a specific set of algorithms, pre-programmed by a human. One view point is that simply following the pre- programmed protocol can hardly be described as ‘creative’, even if the output results may be regarded as ‘surprising’ (and might also fit the definition of an invention). What we essentially get from AI, is a superficial mimicry of the process of ‘invention’, without any of the psychological characteristics associated with human ‘creativity’ or ‘inventiveness’. Therefore, even though a patentable invention may have been generated, without any inventive capacity under our current understanding of the term, it is hard to image how AI could be considered to have invented anything and thus should not be considered an inventor. An inventor is simply a person (or team of people) who have the intellectual capacity to follow a non-routine pathway to arrive a unique product (or method), and then recognise the significance and usefulness of the invention. AI is neither capable of following non-routine (or non-pre-programed) steps, nor of recognising the significance of its output. All it knows is what it is programmed to do.

Watch this space for more…

DONNA MEREDITH Associate

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