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Bulletins » Trick or Treat? UK Government asks for views on AI inventorship

Hot on the heels of the UK Court of Appeal judgement in Thaler v Comptroller General of Patents (reported in our previous bulletin), and as promised in the UK Government’s response to the call for views on Artificial Intelligence (AI) and Intellectual Property (IP) earlier in the year, the UK Government has now launched a further consultation on AI, specifically in relation to copyright and patents.

Released on the last working day before Halloween, the consultation seeks views on, amongst other things, the vexed question of AIs and inventorship. The story so far is that a number of major patent offices around the world (including the UK) have confirmed that their respective patent laws simply do not allow for ascribing inventorship to an AI. Whilst it is an open question whether current AIs are at the point of creating what would be considered an “invention” under these laws, there is a strong desire that IP law does not end up lagging this exciting and fast moving technology.

The UK Government consultation seeks views on three broad potential solutions to the current AI inventorship question in the UK (along with, of course, a proposal to maintain the status quo).

Option 1
The first option for change is perhaps the most low impact, simply re-defining “inventor” to include “the human who made the arrangements necessary for the AI to devise the invention” – echoing to some degree the existing provisions on computer generated works in relation to Copyright. Here, absent the applicant publicising the fact, no-one would know whether an invention was “AI devised” or not.

Option 2
The second involves an explicit indication that the invention was devised by an AI – either by naming the AI, or by permitting no-one to be named as inventor. The consultation is eager to point out that legal ownership issues would have to be addressed with changes to the law, and even more eager to point out that there is no proposal to confer AI systems themselves with “the right or ability to apply for or own patent rights” – the assumption seems to be that the person in option 1 would be the first owner of such an invention.

Option 3
The most radical suggestion comes in the third option which floats the idea of a completely new right to protect AI devised inventions. Apart from having more “limited exclusive rights”, likely via a reduction in term, the proposed details are left very much up in the air. The new right could have a higher bar for inventive step than patents; it could have no examination on inventive step at all, with “decisions on validity left to the courts”.

The consultation acknowledges the potential for tension between the existing patent system and such a parallel patent-like system, especially one that might make the decision as to whether an AI actually devised an invention crucial to the level of protection on offer. Indeed, one cannot help but think of Birss LJ’s dissent in the recent UK Court of Appeal judgement (above) about the dangers of “creating an opportunity for new kind of argument about fraud on the Patent Office” – though, of course, big changes are rarely without the risk of unintended consequences.

The deadline
With AI more and more touching on almost every field of technology the impact of any change (or otherwise) may end up being felt far and wide. Certainly, should the UK jump first on such legislation it is likely other jurisdictions will watch with interest to see the consequences. The closing date for responses to the consultation is 7 January 2022, leaving a few long cold winter nights ahead for any interested parties to consider a response.

Relevant sectors
Aerospace
  • Commercial aviation
  • Defence and security
  • Space and satellites
  • Unmanned aerial vehicles
Artificial Intelligence and Machine Learning
Automotive
  • Autonomous vehicles
  • Electric vehicles
  • Engines
Biotechnology
  • Antibody engineering
  • Antibody manufacture and formulation
  • Bioinformatics
  • Biosimilars
  • Drug delivery
  • Gene editing (e.g. CRISPR)
  • Genomic and molecular tools and methods
  • GM crops
  • Immuno-oncology (e.g. checkpoint inhibitors; modified T cells)
  • Next generation sequencing
  • Nucleic acid synthesis
  • Personalised medicine/disease biomarkers
  • Recombinant protein production and purification
  • Stem cell therapies
  • Supplementary protection certificates (SPCs)
  • Synthetic biology
  • Therapeutic antibodies
  • Vaccinology (e.g. viral vectors; mRNA vaccines)
  • Women’s health products
Chemicals
  • Agrochemicals
  • Catalysts
  • Dispersions and colloids
  • Lubricants
  • Polymers and plastics
Communications and Networks
  • Cloud computing
  • Internet of things (IOT)
  • Oceanography, marine
  • Wired and wireless networks
Computing and Software
  • Artificial intelligence and machine learning
  • Bioinformatics
  • Blockchain and distributed ledgers
  • Communications and networks
  • Computer games
  • Data and software security, cryptography and digital rights management (DRM)
  • Data management and storage, databases and data compression
  • Digital assistants, virtual assistants and software agents
  • Fintech and adtech
  • Machine vision
  • Metaverse, virtual reality (VR) and augmented reality (AR)
  • Motor capture
  • Multimedia, audio/video processing and animation
  • Natural language processing
  • Quantum computing
  • Robotic process automation
  • Search engines
  • Signal processing
  • Software applications and systems, mobile applications, user interfaces
Consumer Goods and Retail
  • Anti-counterfeit devices
  • Beauty
  • Fashion
  • Health, fitness and sport
  • Household goods
  • Luxury goods
  • Moda
  • Retail
Electronics and Electrical Devices
  • Computer and IT architecture and system design
  • Medical devices
  • Optics
  • Restaurants and bars
  • Robotics
  • Scientific instruments
  • Semiconductor devices
  • Testing systems, control systems, signal processing
  • Travel and leisure
  • Wearable tech and human interfaces
Energy and Green Technologies
  • Biofuels
  • Clean air
  • Fuel cells and battery technology
  • Renewables and recycling
  • Solar power
  • Water, oil and gas, nuclear, fusion, fission
  • Wind turbines
Food and Beverage
  • Beverages
  • Nutrition
  • Retail
Industrial Manufacturing and Processing
  • Packaging
  • Polymers and plastics
  • Printing tech
  • Additive manufacturing
  • Coatings
  • Construction
Materials
  • Advanced materials
  • Composite materials
  • Metallurgy and alloys
  • Nanotechnology
Medical Devices and Diagnostics
  • Artificial intelligence
  • Devices
  • Diagnostic instruments
  • Digital health
  • Drug delivery
  • Immuno-oncology
  • In vitro diagnostics
  • Medtech
Pharmaceuticals
  • Diagnostics
  • Drug delivery
  • Generic market entry
  • Medicinal chemistry
  • Methods of production and synthesis
  • Personalised medicine/disease biomarkers
  • Pharmaceutical formulations
  • Pharmaceuticalsceutical formulations
  • Polymorphs
  • Small molecule pharmaceuticals
  • Supplementary protection certificates (SPCs)
Trade Marks
  • Consumer goods
  • Cosmetics and perfumery
  • Financial services
  • Mechanical engineering
  • Mechanical products
  • Services
  • Telecommunications
Relevant sectors