The Inventive Step Requirement for AI-Assisted Inventions

Torger Kielland

The Inventive Step Requirement for AI-Assisted Inventions

By Torger Kielland

From Nordiskt Immateriellt Rättsskydd nr 4 2024

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The Inventive Step Requirement for AI-Assisted Inventions

By Torger Kielland[*]Professor. PhD, Faculty of Law, University of Bergen.

1. Introduction – in the shadow of DABUS

In recent years, discussions about patent law and artificial intelligence have been dominated by one word: DABUS. DABUS is an acronym for “Device for the Autonomous Bootstrapping of Unified Sentience” and is an AI system created by physicist Steven Thaler. DABUS allegedly generated two inventions on its own: a food container based on fractal geometry and a device and method for attracting enhanced attention.[1]See for illustration the European Patent applications EP3564144A1 Food container and EP3563896A1 Devices and methods for attracting enhanced attention. These inventions were the subject of patent applications in numerous jurisdictions, where DABUS was named as the sole inventor. The central issue in dealing with these applications was whether DABUS could be regarded as the inventor of the inventions in question or, more formally, whether DABUS could be credited as inventor in the patent applications. The answer, almost universally, has been “no.” With one exception, every country has rejected Thaler’s applications naming DABUS as the inventor.[2]See, among others, EPO: J 8/20 Designation of inventor I/DABUS and J 9/20 Designation of inventor II/DABUS; Germany: Judgment of the Federal Court of Justice of June 11, 2024, X ZB 5/22 (DABUS); UK: Thaler v Comptroller-General of Patents, Designs and Trade Marks, [2023] UKSC 49; USA: Fed. Cir.: Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022); Australia: Commissioner of Patents v Thaler [2022] FCAFC 62; New Zealand: Thaler v. Commissioner of Patents, CIV-2022-485-118, [2023] NZHC 554. The only jurisdiction where a patent was granted with DABUS named as inventor was in South Africa, see Republic of South Africa, Patent Application No. 2021/03242. However, it should be noted that South Africa’s patent system is a non-examination system, where patents are granted without a formal review process to determine whether they meet all the requirements.

The DABUS applications were clearly an attempt – bordering on a publicity stunt – to establish that AI can independently invent and that such inventions should be eligible for patent protection. However, whether an AI system can be credited as an inventor is essentially a non-issue. Since AI lacks legal personhood, it cannot own patent rights. Regardless of whether the AI system is credited as the inventor of an AI-assisted invention, the patent rights will in practice belong to the entity that controls the output of the AI system.

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