Today, it’s not unusual to see new inventions that either incorporate AI or have benefitted from artificial intelligence. But what about inventions dreamt up by AI? Should we award the patent to a machine?

This is the quandary facing lawmakers around the world with a live test case in the works that its supporters say is the first true example of an AI system named as the sole inventor.

Two leading academics from the University of South Wales just published a commentary in the journal Nature, which examine the implications of patents being awarded to an AI entity.

They argue that patent law as it stands is inadequate to deal with such cases and requires legislators to amend laws around IP and patent laws which have been operating under the same assumptions for hundreds of years.

The case in question revolves around a machine called DABUS (which stands for Device for the Autonomous Bootstrapping of Unified Sentience) created by Dr Stephen Thaler, who is president and chief executive of U.S.-based AI firm Imagination Engines. Dr Thaler has named DABUS as the inventor of two products - a food container with a fractal surface that helps with insulation and stacking, and a flashing light for attracting attention in emergencies.

For a short time, DABUS looked like it might be recognized as the inventor because, in late July 2021, a trial judge accepted Dr Thaler’s appeal against IP Australia’s rejection of the patent application five months earlier. But after the Commissioner of Patents appealed the decision to the Full Court of the Federal Court of Australia, the five-judge panel upheld the appeal, agreeing with the Commissioner that an AI system couldn’t be named the inventor.

The authors of the Nature commentary say the attempt to have DABUS awarded a patent for the two inventions instantly creates challenges for existing law which has only ever considered humans or entities comprised of humans as inventors and patent-holders.

Even if we do accept that an AI system is the true inventor, the first big problem is ownership. An owner needs to be a legal person, and an AI is not recognized as a legal person. So, how do you work out who the owner is?

That’s a big deal. Without ownership, there would be little incentive to invest in making new inventions a reality.

One problem with ownership when it comes to AI-conceived inventions, is even if you could transfer ownership from the AI inventor to a person who should that person be? Is it the original software writer of the AI? Is it a person who has bought the AI and trained it for their own purposes? Or is it the people whose copyrighted material has been fed into the AI to give it all that information?

In any case, the authors argue that governing bodies around the world will need to modernize the legal structures that determine whether or not AI systems can be awarded IP protection. They recommend the introduction of a new and original form of IP law - which they’ve dubbed ‘AI-IP.’ - This law would be specifically tailored to the circumstances of AI-generated inventiveness.

This solution, they argue, would be more effective than trying to retrofit and shoehorn AI-inventiveness into existing patent laws.

Looking forward, after examining the legal questions around AI and patent law, the authors are currently working on answering the technical question of how AI is going to be inventing in the future.

Meanwhile, Dr Thaler has sought so-called ‘special leave to appeal’ the case concerning DABUS to the High Court of Australia. It remains to be seen whether the High Court will agree to hear it. Meanwhile, the case continues to be fought in multiple other jurisdictions around the world.

- NATURE, May 24, 2022, “Artificial intelligence is breaking patent law,” by Alexandra George, Toby Walsh. © 2022 Springer Nature Limited. All rights reserved.