What’s in a name, they say. Well apparently a lot, when the column where the name is being mentioned corresponds to listing of invention in a Patent application. In the recent couple of years, the accredidation of Artificial Intelligence (AI) as an Inventor in an application for a Patent has been almongst if not at the forefront of various discussions concerning the challenges associated with Patentability of inventions concerning or related to AI.

AI, as we know it, has quickly transitioned from the 70 mm screens to our daily lives in the past decade, assessing users in performinh various day-to-day operations of varying complexities. Thus, it was about time and prudent that intellectual creations created by AI be focued upon and challenges associated with IPR protection thereof be dealt with.

Global Developments

The question of accreding AI as an inventor of an invention in a Patent application was brought forth by a series of patent application filed by Dr. Stephen Thaler across various Jurisditions. In all of these applications, Device for the Autonomous Bootstrapping of United Sentience (DABUS), an AI agent, is named as the inventor. While the Patent Offices of US, UK, and Europe rejected these applications due to listing og non-human entity as Inventor, a contrasting stance has been observed in some of the recent decisions.

In the month of July 2021 and in a first, Companies and Intellectual Property Commission, i.e., the IP office of South Africa, issued a patent which listed DABUS as the inventor of the invention. However, it is important to note here that South Africa does not offer a substantive examination of the patent applications.

The above positive instance of accreditation of AI as an inventor was followed by a more comprehensive and Judicially-backed decisio issued by the Federal Court of Australia in the month of August. The Court observed that the word “inventor” is nowhere defined in the Act and therefore, as per its ordinary meaning, it is angent noun. Accordingly, the Court reasoned that the agent could be a person or a thing, and therefore DABUS qualifies as a valid inventor. To further support their reasoning, the Court also stated that nothing in the Act points to the contrary. Ad regards the question of assignment, the Court opinted that Dr. Thaler is the owner, programmer, and operator of DABUS, and therefore, in view of the principles of property law, the invention was made for Dr. Thaler.

Perspetive from India

Amongst the series of worldwide applications that list DABUS as an inventor, a National Phase application ( Indian Application no.202017019068) has been filed in India as well.

The latest status of the Application as per the Indian Patent Office’s Portal at the time of wrting this article indicates that the application has been referred for Examination. Going forward, it would be interesting to see the evaluation of the inventorship criteria and the nature and statement of objection, if any, raised by the Controller in respect of the above application.

In reference to recognition of AI as inventors of intellectual property, the department related parliamentaty standing committee on commerce (“the committee”), in its latest Report on “Review of the Intellectual Property Rights Rgime in India,”has put forth some important observations and recommendations. The committee onserved that the present Patents Act and Copyright Act are not well equipped to facilities inventorship, authorship, and ownership by AI. Specific to Patents, the committee observed that for revision of legislature relating to both. Patents and Copyright. The committee ibserved that “the condition to have a human inventor for innvating conputer related inventions (innovations by AI and machine learning) hinders the patenting of AI iduced innovations in India”. Accordingly, the committee recommend that a separate category of rights for IP created by AI should be framed for adequately protecting such IPRs. Further, the committee also recommended review of the Patents Act and the Copyright Act for incorporation of emerging technologies such as AI in their ambit.

In addition to the above, in a recent development, the Copyright office of India registered a copyright where Robust Artificially Intelligence Graphics and Art Visualizer (RAGUAV), an AI entity, was registered as co-author of an artistic work.

If the recent developments are to serve as an indicator, we can expect a positive outcome in relation to accreding of DABUS as the invnetor in the Indian Patne application, albeit possibly with amendment inventorship?

The Way Forward

The above noted positive instances of acrreditaiton of AI as inventor do point towards an evolving and adaptive which is accommondating of emerging technology trends. However, if the same legal perspective and position is not established uniformly across Jurisditcions, the same could result in various complexities for applicants dealing in AI technologies. For instance, vaid priority claiming could be a challenge in a case where a priority application is filed in a Jurisdiction accepting AI as inventors ans a later patent application is filed in a Jurisdiction which does not recognize AI as in inventors.

Though several challenges exist today in relation to the incorporation of emerging technologies, such as AI within the current legislative framework of IPR, however, the teconomic and societal advance related to such technologies cannot be ignored. Therefore, abalanced revidion of the framework for incorporating such emerging technologies appear to be the way forward.

From RAHUL CHAUDHRY & PARTNERS

September 2021