Problems of patent protection of inventions created by AI

Scientific and technical breakthroughs in the field of artificial intelligence already allow to create offline inventions that meet the criteria for patentability. But despite the formal compliance of patent applications with the conditions of patentability, the key question is whether it is possible to issue a patent for an invention that was created not by the creative work of a person, but by an artificial intelligence system.

The rule that only a person can be the author of an object of intellectual property will be applied in the legislation of most states. In particular, according to Art. 1347 of the Civil Code of the Russian Federation [1], the author of objects of patent law is a citizen whose creative work created the corresponding result of intellectual activity.

The conditions for the patentability of an invention are novelty, inventive step and industrial applicability (Article 1350 of the Civil Code of the Russian Federation). At the same time, scientific and technological breakthroughs in the field of artificial intelligence (AI) already allow the autonomous creation of inventions that meet the criteria for patentability. So, in August 2019, several patent applications were filed, where the DABUS AI system was listed as the author of two inventions. But despite the formal compliance of applications with the criteria for patentability, the key question was authorship, namely, whether it is possible to issue a patent for an invention that was created not by the creative work of a person, but by an artificial intelligence system.

The European Patent Office (EPO) rejected the controversial application, arguing that only an individual can be named as the inventor in a patent. The EPO Legal Appeal Board dismissed the applicant's appeal and also rejected his subsidiary request, in which, without identifying the inventor, the applicant justified his right to a patent by being the owner and creator of the DABUS AI system. The council's refusal was motivated by the fact that an intangible object is not capable of transferring any rights, and thus the applicant cannot be the assignee of DABUS [2].

The US and UK patent offices also rejected the disputed applications on similar grounds, and the national courts upheld the rejection. It is interesting to note that the Australian Patent Office also rejected the controversial application, but the Federal Court of Australia decided that AI could be named as the inventor in the patent and ordered the application to be reviewed. However, in April 2022, the Federal Court of the Whole did not agree with this conclusion and reversed the decision. To date, the only jurisdiction that has issued a patent in which DABUS AI is named as the inventor is South Africa [3].

At the same time, both the European Parliament and the leading world states consider AI as a central element of the digital transformation of society, which cannot be ignored. In this regard, it is emphasized that any regulatory framework should include flexibility that allows for innovation, the freedom to develop new technologies and the use of AI [4]. Obviously, the implementation of these tasks will directly affect the issues of patent protection of the relevant inventions.

Sources:

1."Civil Code of the Russian Federation (Part Four)" dated 12/18/2006 N 230-FZ (as amended on 12/05/2022) // SPS "ConsultantPlus"

2.Ryan Abbott " AIP Worldwide Update July 2022" // https://artificialinventor.com/867-2/ (Accessed: 05/10/2023)

3.https://en.wikipedia.org/wiki/DABUS (Accessed: 05/10/2023)

4.Resolution of the European Parliament of October 20, 2020 on intellectual property rights for the development of artificial intelligence technologies // https://www.europarl.europa.eu/doceo/document/TA-9-2020-0277_EN.html

Resolution of the European Parliament of 12 February 2019 on a comprehensive European industrial policy in the field of artificial intelligence and robotics // https://www.europarl.europa.eu/doceo/document/TA-8-2019-0081_EN.html (accessed: 10.05.2023)