AI & IP Consultation - Focus On Patents

• Published date: 15 March 2022
• Law Firm: D Young & Co
• Author: Jennifer O'Farrell and Doug Ealey

In view of the increasing use of artificial intelligence (AI) in fields of research as diverse as drug discovery and automotive design, a consideration of inventorship issues arising from this use is warranted; and the UKIPO is currently undertaking a consultation focusing on potential changes to copyright and patent law. Here we explore the issues considered by the consultation and explain the reasoning behind our response, with a particular focus on patents. In a later newsletter we will explore the issues surrounding copyright and data mining in more detail.

The UK Patents Act (UKPA) defines an inventor as "the actual deviser of the invention" (Section 7(3) UKPA). It is currently accepted within UK law that this must be a person (Thaler v Comptroller General of Patents, Trademarks & Designs, 2020, EWHC 2412(Pat)), and this view has also recently been confirmed by the EPO (J8/20 & J9/20).

As AIs become increasingly autonomous and complex, the patents section of the current consultation focuses on whether AIs could, and should, be listed as inventors, as has recently been accepted in Australia and South Africa. This is of course an important issue in the UK, where patent ownership follows inventorship.

As part of the consultation the UKIPO has identified four potential ways forward:

Patent inventorship
Option 0	Make no legal change.
Option 1	"Inventor" expanded to include humans responsible for an AI system which devises inventions.
Option 2	Allow patent applications to identify AI as inventor.
Option 3	Protect AI-devised inventions through a new type of protection.

Making no legal change is not fit for purpose

In our opinion the UKIPO's current system for determining inventorship of inventions made using an AI is not fit for purpose since it gives no credit for the invention to the devisor of the AI, even though they may have been instrumental in arriving at the invention. We therefore consider that option 0, make no legal change, should not be adopted.

"Inventors" should be expanded to include humans responsible for an AI system

In our response to the consultation we strongly advocated for option 1, which would see the term "inventor" expanded to include humans responsible for an AI system that generates inventions. This appears to be broadly in line with the approach recently adopted by the German Federal Court.

We consider that, for the foreseeable future, AIs simply cannot be considered to be inventors. AIs are increasingly capable of generating...