Artificial Intelligence And Inventorship: News Round-up

• Published date: 23 March 2021
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: Potter Clarkson
• Author: Mr Saiful Khan

Confused about where we are at with IP policy developments around artificial intelligence? Saiful Khan provides an update on the progress from the perspectives of the UKIPO, EPO and WIPO.

DABUS REFUSAL INCORPORATED INTO UK IPO PRACTICE

The UK IPO's Manual of Patent Practice has been updated to reflect the decision by the UK High Court to reject two UK patent applications designating an AI system ('DABUS') as inventor [1, 2]. This update confirms, at least for the time being, that under UK patent law an inventor must be a natural position capable of owning intellectual property or, by extension, transferring ownership of intellectual property to a patent applicant.

DATE SET FOR DABUS APPEAL HEARING IN EUROPE; EPO PRESIDENT INVITED TO SUBMIT COMMENTS

The decisions by the EPO to refuse two European patent applications designating DABUS as inventor remain under appeal, with oral proceedings scheduled for 21 December 2021 [3].

As part of the appeal proceedings, the Board of Appeal recently issued a communication to EPO President António Campinos inviting him to submit comments on topics pertinent to the appeal [4]. First and foremost of these topics is the question of whether, in accordance with the EPC, the inventor must be a human being. Comments are also expected on points of procedure surrounding the appeal, such as whether the time limit for filing the designation of inventor can be waived by the applicant.

The Board's communication further drew attention to two matters that may become relevant for deciding the appeal. In brief, these matters are the purpose and function of the requirement to designate the inventor in a published European patent application; and whether the EPO has competence to examine the statement relating to the way in which the applicant has required the right to an invention, or whether it should only formally establish that such a statement has been filed.

President Campinos' comments are due by 1 May 2021. Publication of his comments is anticipated shortly thereafter.

CIPA'S RESPONSE TO THE UK IPO'S CONSULTATION ON AI AND IP: SUGGESTION TO MODIFY THE DEFINITION OF "INVENTOR"

Last autumn the UK IPO sought views on the implications AI might have for IP policy and its framework [5]. In response, CIPA - the professional body for UK patent attorneys - provided extensive comments not just on matters relating to patents, but also designs copyright, trade marks and trade secrets [6].

In relation to the impact of AI on the patent system...