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The Patent Predicament: Recognise or Relegate AI Patent Inventors?

Law as stated: 1 September 2023 What is this? This episode was published and is accurate as at this date.
Patent Attorney Alana Hannah of FB Rice joins David Turner in the Curiosity Recording Room to digest the debate around AI inventors in patents, touching on the importance of patent attorneys as trusted technical advisors, and multi jurisdiction patent applications.
Substantive Law Substantive Law
Alana Hannah
FB Rice
1 hour = 1 CPD point
How does it work?
What area(s) of law does this episode consider?AI and patents.
Why is this topic relevant?In the Thaler decision of the Federal Court, the eponymous provocateur sought to have his creative machine, DABUS, listed as the inventor on an Australian patent application. The Australian push was part of a broader project called The Artificial Inventor Project: “a series of pro bono legal test cases seeking intellectual property rights for AI-generated output in the absence of a traditional human inventor or author”.

In Australia, that push failed. On appeal, a Full Court of the Federal Court held that an AI could not be considered an inventor for the purposes of patent law – an inventor must be a natural person. But the proliferation of creative machines over the last year has brought the concept of artificial inventors ever closer.

What are the main points?
  • AI is usually not coming up with ideas on its own, but rather is following the instructions or parameters given to it by humans interacting with it.
  • However, AI is useful where it is used as a tool to run through different scenarios or possibilities at a much faster rate than humans could.
  • This could include predicting how different compounds might interact, and identifying potential drug targets.
  • In this example, while the AI is crucial in speeding up and improving the drug discovery process, it is not inventing the end product.
  • The human researchers who gave the AI its instructions and used its predictions might be considered inventors.
  • Under current patent law, the problem arises when AI is not merely used as a tool, but rather is responsible for coming up with inventive concepts on its own.
  • In such cases, it becomes much more difficult to determine who should be listed as the inventor.
  • The Artificial Inventor Project is a global initiative that tests whether AI can be listed as an inventor in various countries around the world.
  • While most jurisdictions (including Australia) have either rejected or are still considering these applications, South Africa became the first country to grant a patent to an AI inventor.
  • However, this can largely be attributed to the fact that South Africa does not examine patent applications but relies on objectors to validate the patent.
  • The general consensus among most countries is that patent laws are not designed for non-human inventor entities.
  • Organizations can leverage the Patent Cooperation Treaty (PCT), a system for the global recognition of patents, to file patents in multiple jurisdictions at once.
  • However, each country has its own case laws and specific exemptions, which can create conflicts when an AI-generated patent is accepted in one jurisdiction and rejected in another – for example, the case with South Africa.
What are the practical takeaways?
  • Patent attorneys can be trusted advisors to litigators working in the patent space – often translating from a technical background.
  • A key skill in being a patent attorney, according to Alana, is the ability to clearly communicate complex technical concepts.
  • She adds that having a technical degree is necessary for the role and that the innovation around AI creates exciting opportunities in her job.
Show notesThe Artificial Inventor Project