[Opinion] Can an AI system be an inventor ?

http://ipkitten.blogspot.com/2021/12/opinion-can-ai-system-be-inventor.html

There has been much headline ink spilled on the question of AI-inventorship in the IP press and beyond.  Kat friends Professor Kelvin FK Low (National University of Singapore), Professor Wai Yee Wan (City University of Hong Kong) and Associate Professor Ying-Chieh Wu (Seoul National University) examine the recent Australian and UK cases and critical analyzes the arguments on both sides in an attempt to answer that question and how (or whether) AI-inventorship incentivizes invention.  Over to the Professors:

“There is an increasing influential and bludgeoning legal literature on how artificial intelligence (AI) systems should be treated in law. One question that has recently been in the headlines around the world, thanks to the Artificial Inventor Project, is whether or not an AI system can be regarded as an inventor. The Artificial Inventor Project is championed by Ryan Abbott, who has argued in “I Think, Therefore I Invent: Creative Computers and the Future of Patent Law” (2016) 57 Boston College L Rev 1079 that while an AI system is not yet a legal person, it should nevertheless be acknowledged as an inventor, with any patent it produces being allocated to its owner. The headlines are the result of the Project’s filing of parallel applications to patent offices in several jurisdictions over a number of inventions generated by an AI system named DABUS (Device for the Autonomous Boot-strapping of Unified Sentience), invented by Dr Stephen Thaler. In our recent paper, we critique Abbott’s proposal whilst contemplating AI’s status as property or person.

It is perhaps most interesting to compare the contrasting fortunes of the Project’s filings in Australia (Thaler v Commissioner of Patents [2021] FCA 879) and England and Wales (Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat)/Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374). In Australia, Beach J accepted that Dr Stephen Thaler, the inventor of DABUS, could be said to either be entitled to have the patent assigned to him or be a person who derived title from the inventor, thus overcoming the difficulty that even if DABUS could be regarded as an inventor, it could not itself own a patent owing to its lack of legal personality. The convoluted contortions that Beach J engaged in to arrive at this conclusion was rejected in England. The argument is perhaps best summed up by Marcus Smith J, who described it as “hopeless” because “DABUS would – by reason of its status as a thing and not a person – be incapable of conveying any property to Dr Thaler. In short, the ability to transfer, which DABUS lacks, is fatal to Dr Thaler’s contentions. The same point can be put in a different way: because DABUS is a thing, it cannot even hold property, let alone transfer it.”

Setting aside issues of statutory interpretation, Abbott’s proposal (and hence the Thaler litigation) rests on two prongs, both deeply flawed. First, an inapt analogy to accessio, an aspect of which deals with “ownership of the progeny of animals or the treatment of fruit or crops produced by the labour and expense of the occupier of the land (fructus industrialis)”. Many non-experts assume that these rules have an air of natural law to them and deduce implications which do not follow. As Arnold LJ clarified, these instances of accessio “all concern new tangible property which is produced by existing tangible property.” It could not apply to intangible property produced with the aid of tangible property else much of our intellectual property law will have to be rewritten. If I take a photo with your camera, I own the copyright to the photo, even if I used your camera without permission (though I would then be liable in trespass).

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