Invention without the Inventor

The Chartered Institute of Patent Attorneys (CIPA) is the professional organization of UK Patent attorneys. The organization has released a new discussion paper on invention without the inventor.

Although the current debate is captioned around artificial intelligence (AI) systems, a real underlying focal point is a mechanism to allow for immediate and automatic corporate ownership:

Many in CIPA think patent rights should be available for inventions which represent new, non-obvious technical developments, regardless of how they were created (with or without an AI system).

Others in CIPA prefer to limit patent protection to inventions having a human contribution – in effect, retaining current inventorship requirements, but accepting that an invention created using AI is patentable as long as there is a genuine human contribution.

CIPA DISCUSSION PAPER ON AI AND INVENTORSHIP.

15 thoughts on “Invention without the Inventor

  1. 3

    It seems to me that we would be better off agreeing that there is always an inventor, and the only issue is identifying the inventor. With such an approach, there is less of a chance of the programmer of the AI and operator of the AI being taken advantage of by the owner of the AI program that is alleged to have done the inventing.

    1. 3.1

      Sorry David, but your desired Ends do not accord with the legal precepts of any current Means.

  2. 2

    I realize this may be a dumb question but I am a librarian, not a lawyer. How can AI be considered an inventor? Doesn’t someone have to either start a process and/or review the data to determine whether something is useful/novel? Otherwise, it just seems like a bunch of random calculations but the synthesizing of the data must be assembled by someone, right? Wouldn’t it be appropriate for the person assembling the data to be the inventor, rather than the calculator? Apologies if I don’t understand the technology in question.

    1. 2.1

      Otherwise, it just seems like a bunch of random calculations but the synthesizing of the data must be assembled by someone, right?

      No.

      Mike, there is a deeper discussion over at the IPWatchdog blog on this topic and the main distinction at the heart of the issue here is that there is a cleaving of a sub-part of what the legal term “inventor” means (Conceiver, or in the UK parallel case, Devisor) and what is necessary to HAVE an inventor.

      Over on the other blog, discussion points include historical analogs (slave owners) as well as Black Box thought experiments that show that what you seem to want as ‘appropriate’ cannot meet the legal requirements.

      1. 2.1.1

        Thanks. I’ll check it out.

    2. 2.2

      That was not a dumb question.

  3. 1

    How much does it matter, that the inventor be named on the patent, if the statute includes rigorous provisions for disputing and fixing correct ownership of the rights given by the issued patent?

    I mean, so long as an aggrieved true inventor not enjoying their due rights is free to pursue their ownership claim through the courts, to secure their rightful enjoyment of title, where’s the harm in repealing any legal requirement to name the inventor to the PTO, in the patent application or even on the issued patent? Instead, simply require the Applicant to swear that, as opposed to any inventor, it is the rightful owner of the claimed subject matter.

    Take DABUS and Applicant Dr Thaler. Under the EPC, Dabus, and only Dabus, can assert a claim for ownership. When will Dabus commence any such claim? When will AI machines be given sufficient legal personality to pursue an ownership claim through the courts?

    1. 1.1

      You presume your own conclusion that the deciding factor is to be the ability of the correct owner to be able to obtain her own reward.

      That is not the driver.

      I invite you to read the current reigning Supreme Court (US Supreme Court) case on the subject of just how the US Sovereign ties the fruit of innovation protection back to the deserved: Roche V. Stanford. See link to scotusblog.com

      1. 1.1.1

        On this precise point, do you see a difference between Roche v Stanford and Art 60(1) of the European Patent Convention?

        link to epo.org

        1. 1.1.1.1

          Have you bothered with the case I provided?

          There is an immediate and clear distinction with the focus of the originating source of the inchoate right that becomes the full set of legal property rights upon grant in the US Sovereign.

          Your link is entirely absent of that legal point.

          Elsewhere you have been schooled on your LACK of actually engaging on what it means to understand law (of the US) from the US perspective.

          I can not force you to think — I can only lead you to the well of wisdom.

        2. 1.1.1.2

          I will take it as the answer is “No.”

          Once again, MaxDrei you show your color by not actually bothering to understand the US perspective.

          Do you really wonder why it is that those who have dealt with you over the years are so quick to disdain you and your antics? Heck, on that other blog you have alienated someone brand new in a first interaction.

          Over there you clamor for ‘respect’ and yet you continuously
          F
          A
          I
          L
          to appreciate that the respect (or lack thereof) is exactly what you have earned.

          Don’t like it? Then change your ways.

          And no, this is NOT a new message to you.

    2. 1.2

      Max, you ask “How much does it matter, that the inventor be named on the patent” [other than for ownership determination.]
      One reason it matters is that whenever a patent is litigated here an important discovery source for otherwise hard-to-find prior art [or un-named co-inventors] may be in depositions of the named inventors who signed the inventorship oaths. E.g., prior products, service manuals or other obscure publications, software sources, pre-filing public use, suggestions of others, etc.
      [I understand the UK does not provide the same litigation discovery as U.S. courts.]

      1. 1.2.1

        Also, historically, U.S. scientific and engineering societies have politically supported the requirement for inventors to be correctly named AND be inventorship oath signatories. [Presumably to insure the actual inventors get the public credit rather than a supervisor or assignee?]

        1. 1.2.1.1

          It goes deeper than that, Paul, back to the Lockean roots and the nature of inchoate rights.

        2. 1.2.1.2

          Paul, you identify two strong reasons to state on the patent the person who made the invention. I should mention here that under the EPC, where the inventor has to be named on the file, the inventor can, on request, require the Office to keep their identity from the general public. At least in biotech cases involving animal trials, this is important.

          As to the discovery process, might not the patent owner be required to discover the identity of the inventor to the other side?

          As to inventors getting credit for their contributions to the useful arts, a large number of countries have a law of employee inventions which provides for the award of compensation, by the employer to the inventor. There is a library full of case law in Germany but the blockbuster case was in Japan, for the guy who invented the Blue Diode, where the compensation was in millions. The absence of the name of the inventor from the front page of the issued patent is no impediment to the award of compensation.

          At least in Germany, if the employer fails timely to take a formal assignment of rights from the employee inventor, that inventor can later seize ownership of the patent from the employer/patentee.

          Carefully thought through checks and balances, diligently updated, are what keep the system running fairly, and restrain bad actors from playing increasingly fast and loose.

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