The EPO generally likes applicants to abide by the Articles and Rules of the EPC. It is therefore not surprising that the Receiving Section of the EPO has refused the recent European patent applications designating an AI inventor for contravening the provisions on inventor designation (Article 81 and Rule 19 EP).  The refusal followed a mere 16 minutes of deliberation at an EPO hearing in Munich.

IPKat reported on the AI inventor patent applications earlier this year (IPKat: The first AI inventor - IPKat searches for the facts behind the hype). Dismissed as a publicity stunt by some, the team behind the European, UK and US applications have defended the applications as an attempt to address the moral issues arising from inventions for which no human inventor can be ascribed. However, it is clear from the Minutes of Oral Proceedings (and preliminary opinion), that the EPO was not convinced that the human applicant (Dr Thaler, inventor of the AI) had satisfactorily demonstrated how he had derived the right to the applications from the AI. Important questions also remain as to whether the AI can truly be said to have invented, and whether the whole debate is decades too premature.

Ownership is what matters in European patent law

One crucial issue of AI inventorship is how the applicant can be said to derive the right to a patent from the AI. How can an AI assign such a right? The Receiving Section stressed that the EPO does not investigate whether the designation of an inventor is correct (Rule 19(2) EPC). However, an applicant for a patent who is not the inventor is required to state how they derived the right to the invention from the inventor (Article 81 EPC). The team behind the AI inventor applications have always maintained that the applications are owned by the inventor of the AI, Dr Thaler, and not the AI itself. But how does Dr Thaler derive this right?

Dr Thaler, initially indicated that he derived the rights to the invention from the AI inventor as the AI's employer (a claim that raises certain philosophical questions in and of itself). The EPO did not accept this as a valid derivation of right, and Dr Thaler tried again by claiming that he was the successor in title of the AI as the AI's owner. However, as the Receiving Section noted in the preliminary opinion: "machines do not have legal personality and cannot own property...a machine cannot own rights to an invention and cannot transfer them within a employment relationship (as proposed by the applicant on 24.07.2019) or by succession (as suggested by the applicant on 02.08.2019)".

Chappie: Artificial General Intelligence employee (and most underrated movie of 2015)

It seems that the EPO can therefore neatly dismiss any need for detailed discussions on the morality of AI inventorship, so long as the AI inventor is not also claimed to be the owner of its creations. It has always been this Kat's view that the whole exercise of the AI inventor applications is slightly irrelevant given that what primarily matters from a legal standpoint is who owns an invention, and who should therefore be awarded the patent.
The written decision is expected early in the new year. IPKat has learned from Professor Ryan Abbott (University of Surrey and key member of the "AI inventor" team) that Dr Thaler plans on appealing the decision.

Has the AI actually invented?

As already mentioned, the EPO does not investigate whether the inventors named on a patent application really are the inventors (Rule 19(2) EPC). The question of whether the AI really did invent the fractal food container and fractal light signalling inventions that are the subject of the applications is therefore not one that the EPO will attempt to answer. However, it is worth remembering that the team's claims about the AI inventor are extraordinary.

An AI that is truly capable of inventing will be capable of reading and understanding the prior art, finding a problem to be solved, finding a novel and inventive solution to the problem and then communicating that solution in a way that is understandable to a skilled person. An AI capable of such a complex collection of tasks would have a close to a human level of intellect, i.e. an artificial general intelligence (AGI). An artificial general intelligence is a 20 year goal of companies like Google DeepMind and Google Brain. Dr Thaler has, in fact, argued that his algorithm "paves the way for sentient AI since it teaches how machines may generate the equivalent of subjective feelings...It is expected to be the successor to deep learning and the key to achieving human level machine intelligence. It will be used to build highly transparent and self-explanatory synthetic brains to achieve so-called “Artificial General Intelligence” (AGI)" [Merpel: someone needs to tell Demis Hassabis...]. A summary of the incredible abilities of Dr Thaler's AI can be read on his website.

So far, however, the precise details of how the AI performs the inventive act have not been published and remain distinctly vague. It seems likely (at least to this Kat) that Dr Thaler's AI may have more limited abilities than are enthusiastically propounded by the team. This raises the question of whether the AI is, in fact, no more than a tool whose abilities can be equated to other types of technology.

At the recent Life Science Patent Network (LSPN) London conference, this Kat had the pleasure of participating in a panel discussion with Professor Ryan Abbott on the topic of AI inventorship. Professor Ryan Abbott made a plea for the importance of the moral and social issues surrounding AI inventorship. However the Professor did not seem to address the question of how the AI could be said to be different to other types of platform technology, e.g. mouse models.

The central claim of the AI inventor team is that there was no human input in the generation of the invention: "the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient". However, the same could be said of a mouse model used to identify novel, inventive and useful antibody therapeutics. The human experimenter provides the antigenic challenge, and the mouse's immune system produces structurally unique, non-obvious therapeutics that are potential suitable for use in humans. The "invention" of the antibody structure could not have been derived by the human experimenter themselves. However, no one is arguing that mice should be inventors.

Are the AI's inventions even novel?

As a side issue, a perusal of the file reveals that the AI inventor may also not be as good at inventing as had been first thought. The two applications claimed a fractal food container (EP 18275163) and fractal light signals (EP 18275174). The team behind the AI have been previously eager to point out that a search by the UK IPO found the claims of the UK application to be novel and inventive. The EPO did not agree with the UK IPO. Both the Food Container and Light Signals invention, as originally claimed, were found to lack both novelty and inventive step (European search opinion). The Examiner cited, for example, US 5803301 as disclosing a beverage container having all of the features of the one allegedly invented by the AI.

Prior to the EPO's decision to refuse the applications because of the inventorship issues, the applicant had submitted amendments and arguments in response to the substantial objections. However, the issue of novelty and inventorship have become redundant in view of the formality issues with the applications.

Final thoughts

If Dr Thaler's appeal of the Receiving Office decision does indeed go ahead, IPKat will await the Statement of Grounds with interest (deadline for filing the appeal will be early 2020). Based on their submissions to the Receiving Office, it seems that the AI inventor team are lacking the legal arguments to overturn the decision. Moral and social arguments are unlikely to convince the Boards of Appeal. A request for a referral to the Enlarged Board can probably also be expected, but is similarly unlikely to be granted. None-the-less, the team have undoubtedly been successful in one goal, bringing attention to Dr Thaler and the team. Notably, we are only able to see the file history because early publication of the applications was requested. However, in this Kat's humble view, the whole argument surrounding AI inventorship is premature until the existence of an AI truly capable of a inventive act has been proved.

As has been recently widely reported (BBC, Financial Times and The Times), a number of patent applications have been filed designating a machine learning (ML) algorithm as an inventor. The aim of the applications appears to kickstart a conversation on how patent law could be changed to take account of AI inventorship.  But before we answer the "could", we need to answer the "should".  A claim of AI inventorship is also one that should be carefully examined. An AI that can understand the state of the art and articulate a meaningful and inventive contribution to the field, would be an incredible advance in machine learning.

AI inventor - searching for the evidence

Dr Stephen Thaler

Despite all the media attention, details about how the AI inventor actually invents are sparse. The reportedly inventive algorithm is covered by its own patent (US 2015/0379394) and was itself invented by Dr Stephen Thaler. A look at Dr Thaler's company website (Imagination Engines) reveals that Dr Thaler purports to have invented neural networks that manifest "near-death experiences". The networks also exhibit "a stream of consciousness" and "contemplate, invent, and discover". The inventive AI is based on Dr Thaler's "master equation that quantitatively predicts the rhythm of idea generation". ["Does "idea generation" even have a rhythm?" asks Merpel.]

Despite the potentially revolutionary nature of his inventions, Dr Thaler has not published examples in which his "Creative Machines" are tested according to the standards tests for AI algorithms (e.g. as would be demanded for a publication at a major ML conference, such as NeurIPS, ICML or ICLR). If Dr Thaler has "derived a master equation that quantitatively predicts the rhythm of idea generation", it would be normal to expect evidence of these quantitative predictions.

Computer having a near-death experience

The moment of invention

It could be argued that the algorithm's inventions are themselves evidence of its inventive capacity. The applications naming the algorithm as an inventor relate to a food container (EP18275163, the corresponding US application can be seen here) and a flashing light to be used in emergency situations (EP18275174, the corresponding US application can be seen here). The University of Surrey press release indicates that the UK IPO has already found these inventions to be novel, inventive and to have industrial application. Of course, novel, inventive and industrial applicable subject matter is not necessarily commercially useful or practical.

Notably, despite relating to entirely different fields, both of the recently filed applications appear to be based on a similar concept: fractals. The food container has walls "having a fractal profile" and the flashing light randomly flashing according to a waveform "satisfying a fractal dimension equation" [Merpel: perhaps the "inventive algorithm" has made the surprising discovery that everything in life could be improved by basing it on fractals!]

Another intriguing (and unanswered) question is how the algorithm articulates its invention. The patent application claims seem to have been drafted by a patent attorney. The University of Surrey press release indicates that Dr Thaler is working with an international team of patent attorneys from Williams Powell, Flashpoint IP, Dennemeyer and Fuchs IP. In what form was the "invention" output from the algorithm handed to the patent attorneys? Was it in the form of words, pictures, a time series? How did the algorithm communicate the invention? Does it talk? The patent applications and press releases are unclear on these points. Patent offices and patent laws do not require human inventors to explain how they arrived at an invention. It is therefore unclear whether the patent offices will want to see evidence of how the algorithm actually invents.

Convinced? The team behind the "inventive algorithm" have a FAQ page that describes how the AI works, that readers are encouraged to visit so that they can decide for themselves.

The legal issue of AI inventorship

If, for the sake of argument, we assume that Dr Thaler's algorithm is capable of performing a creative inventive act, does it therefore make sense to name the algorithm as an inventor? This question was considered from the US perspective over on IPwatchdog.

Fractals!

The team behind the applications, who include Professor in Law at the University of Surrey, Ryan Abbott, argue that it should be permitted to name machines as inventors. The team argue that the algorithm was responsible for the inventive concept behind the patent applications, and that the algorithm would meet the criteria for inventorship if it was a natural person. The team also argue that allowing machines to be named as inventors would stimulate innovation into inventive machines. Therefore, acknowledging machines as inventors would help protect the moral rights of human inventors.

Is AI any different to other types of platform technology?

On 30 May 2018, the EPO held a ‘first of its kind’ (as it was called by one of the EPO officials) conference on ‘Patenting Artificial Intelligence’. The event reportedly sold out one week after registration opened, showing the tremendous interest from professionals and industry in the field.   Katfriend Olga Gurgula (Lecturer in Law at Aston Law School and Visiting Fellow at Oxford Martin School, University of Oxford) was on hand to report back to the IPKat readers, and some moral musings from Gwilym Roberts on these issues will follow shortly in a separate post.

"This timely event coincided with the confirmation by EU Ministers that AI will become one of the most significant mechanisms for boosting the competitiveness of the EU and the wellbeing of its citizens.



The second half of the day was all about post-grant aspects of AI patents and ownership in different jurisdictions, including Europe, the US and Japan. The concluding session addressed controversial ethical aspects and considerations associated with patenting AI related inventions, including such issues as AI and IP related to consumer protection and security, as well as who is entitled to a patent for an artificially generated invention and who should benefit from such inventions. An interesting discussion was generated by a presentation of Dr Noam Shemtov (Queen Mary University of London), who shared his thoughts in relation to the autonomous inventions, and whether the current standard of the assessment of obviousness bench-marked against the ‘person skilled in the art’, i.e. human, is adequate, or whether it may require some adjustments to scenarios involving autonomous invention processes.

In a lively Q&A, one of the participants, Gwilym Roberts from Kilburn & Strode, raised a fundamental question in relation to AI inventions. In particular, as technology develops and AI begins to invent more and more, is there a risk that the owners of AI will begin to dominate the IP sphere? In other words, big companies or countries that invest in AI now could soon have a super-monopoly in this area. Therefore, the question is whether the current policy is well equipped to deal with this problem at present. Dr. Shemtov suggested that perhaps competition law, rather than patent law, is better suited to deal with this problem.

The speakers and audience shared a range of other interesting thoughts and ideas in relation to AI, which were seen as crucial to consider for enhancing the patent system in this area. These included, for example, growth of ‘black box’ AI technology, which is becoming self-explaining. It is therefore now possible to understand how it works and takes decisions, which is important inter alia from the perspective of Article 83 and 84 of the EPC. It was also noted that the EPO had habitually responded to software innovation by developing the CII regulations without changing the law, i.e. by patching the system. The room considered whether we can continue to patch the system in relation to patenting AI or whether more fundamental changes are required.


Olga's cat: natural intelligence

Some innovative proposals were mentioned, such as introducing a utility model to provide fast provisional protection; changing the philosophy of IP legislation from protecting inventors to protecting business; and publishing patent applications earlier than 18 months as the current period does not suit new technologies such as AI. Finally, the crucial question was raised: do we somehow allow the patentability of algorithms?

As Grant Philpott (EPO Chief Operating Officer ICT) noted in his concluding remarks, adapting the patent system designed for hardware innovation to the virtual world of software innovation has been a long and difficult process, but ultimately, Europe and the EPO have succeeded in developing a highly methodical approach to the patenting of CIIs, which is firmly rooted in EPC case law and EPO practice. However, as AI software becomes super-software, incredibly powerful and versatile, the challenges for our patent system are likewise significant. Events such as this help us to meet that change and ensure that AI and its impact on patents and patentability continues to be dealt with systematically and in line with the laws and needs of stakeholders. Only by doing so can our system provide the stability and predictability that the industry needs for its business models, and further support economic growth of Europe.

To conclude, the 4IR is happening right now, and AI plays a key role in these dramatic changes, impacting the scale and the speed of innovation in every industry. Examples of AI in emerging technologies, which would have doubtless been seen as science fiction less than a decade ago, are now becoming part of our everyday life. As one of the speakers noted: ‘It is not a myth, it is already here’. Therefore, a clear vision on how to boost the development of AI, while maintaining ethnical aspects in place, is a fundamental issue that requires urgent decisions involving all stakeholders and members of society, and the EPO’s initiative in calling this conference is a welcome step in the right direction."