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Brazilian Patent and Trademark Office: Artificial Intelligence (AI) cannot be designated as inventor

By Henrique Steuer I. de Mello and Patricia Porto, Danneman Siemsen - 05/10/2022

Henrique Steuer I. de Mello is a Partner at Dannemann Siemsen. Lawyer. Mechanical Engineer. Industrial Property Agent. Specialist in Patents and Technology Transfer from the Franklin Pierce Law Center - US.

Patricia Porto is an Academic Coordinator at Dannemann Siemsen Institute. Lawyer. PhD in Public Policies. M.Sc. in Intellectual Property and Innovation.

Applications submitted to several countries’ Patent and Trademark Offices - PTOs indicating AIs as inventors are forcing these offices to decide on the acceptability, or otherwise, of such applications. Ultimately, those authorities are having to decide whether an AI system can be designated as “inventor” of a patent.

Stephen Thaler, owner of the AI system named DABUS – Device Autonomous Bootstrapping of Unified Sentience, represented by his attorney Ryan Abbott, is filling patents applications before several countries’ PTOs seeking protection to inventions that, according to Dr Thaler, were created solely by DABUS. In these patent requests, the AI is named in the patents as the inventor. According to Ryan Abbott, “patent protection should be available for AI-generated works because it will incentivize innovation. The prospect of holding a patent will not directly motivate an AI, but it will encourage some of the people who develop, own, and use AI. Allowing patents on AI-generated works, therefore, will promote the development of inventive AI, which will ultimately result in more innovation for society" (1).

Meanwhile, several countries have expressed their views on the matter, the large majority signalling “no” - to AI systems being “inventors” – via their Courts and PTOs. USPTO (2), EPO (3), UKIPO (4), and Courts and Offices of other countries (5), have ruled that patent applications nominating AI as “inventor” is not acceptable. Generally, these countries contend that such patents requests cannot be accepted because AI cannot be assigned as “inventor” of a patent, for lack of legal basis for such attribution. The decisions also indicated that, by Law, only a natural person, meaning a human being with legal capacity, would have legitimacy in law to be recognized as inventor. The Australian Court (6), which had accepted, initially, AI as “inventor” in a patent application, changed its position at appeal level. The German Federal Court position adopted a middle ground, by refusing to accept AI as sole inventor, while allowing the designation as inventor of the AI owner, in the quality of the person who prompted or directed the AI system to originate the invention (7). Up to now, the Republic of South Africa (8) is the only country known to have accepted a patent request designating an AI as “inventor”.

More recently, Brazil joined the group of countries saying “no” to acknowledging AI as “inventor”. Brazil’s PTO Federal Attorney Office issued a Legal Opinion on August 8th, 2022 (9), declaring that is not possible to indicate or nominate AI as “inventor” in patent applications. The latter opinion also clarified that the “inventor” must be a natural person.

The legal opinion was motivated by the patent application BR 112021008931-4 (PCT/IB2019/057809), published on August 10th, 2021, under the title “Recipiente de alimentos e dispositivos e métodos para atrair uma maior atenção” (10), presenting Dr Stephen Thaler as applicant and DABUS as inventor. In the application, beside DABUS entered as inventor’s name, the applicant provided the following information: “the invention was autonomously generated by artificial intelligence”.

The Brazilian Patent and Trademark Office - BRPTO observing that no natural person was indicated in the applications as inventor, followed by a requirement for clarification of the designated inventor. The BRPTO informed that in view of article 6 (11) of Brazilian Industrial Property Law, it can be inferred that the inventor of a patent application must be a person with legal capacity. Based on this statement, the office requested the applicant to explain and justify nominating DABUS as the sole inventor of the patent.

The applicant subsequently contended that such concept of “inventor” is not defined in Brazilian law. The applicant also argued that, according to article 6.2 (12) of the law, the right to apply for a patent only presumes that the applicant should be a capable agent, thereby rendering irrelevant whether or not the inventor has legal capacity. In his rationale, Dr Thaler also argued that, as owner of DABUS, he was entitled to the goods and products generated by his property, pursuant to the article 1.232 of the Brazilian Civil Code. The applicant reasoned that the sole consequence in the designation of a non-human inventor in the application should be the absence of attribution to the inventor of the moral rights of nomination, stipulated in article 6.4 (13) of the law. Furthermore, the non-formation of moral rights does not mean that the right to apply for a patent cannot be granted to an original holder. Finally, the applicant observed that the BRPTO should make use of the act of the parties, per article 220 of the law.

In the reasons for his decision, the Federal Attorney indicated as the legal basis of the Opinion the article 4o, ter of the Paris Convention Union, the articles 6, 6.2 and 6.4 of the Brazilian Industrial Property Law and the TRIPS agreement as general.

In the Opinion, it was noted that, historically, the intellectual property legislation ignored the possibility of non-human entities or machines as authors or inventors. It was also pointed out that at the time of the TRIPs negotiation, in 1994, the question of attribution of an invention to a non-person was not a reality in the world.

The Federal Attorney further argued that article 4o, ter of the Convention states “the inventor shall have the right to be mentioned as such in the patent”, thereby only a natural person can be nominated as author or inventor.

Regarding the analysis of the national law, the Federal Attorney indicated that the article 6 states that to “the author of an invention or of a utility model will be assured the right to obtain a patent that guarantees to him the property”. He also pointed that the article 6.2, in stating that “a patent may be applied for by the author, his heirs or successors, by the assignee or by whoever the law or a work or service contract determines to be the owner”, assures that the property rights deriving from the invention can be assigned, guaranteeing the inventor the right to alienate the invention. Finally, the Federal Attorney asserted that, per article 4 ter of the Convention, article 6.4 grants to the inventor the right to be nominated, even if the rights derived from the patent have been assigned.

The common denominator of the content of the articles mentioned above is the mention of an “author” and the inventor’s “nomination”, that can be interpreted implicitly as the requirement of a natural person as inventor.

The Opinion asserted that, in light of the above-mentioned rights, the conclusion can only be that the inventor must be a person in the meaning of the article 1o of the Brazilian Civil Code (14), that is, a human being with legal capacity.

In addition, the Federal Attorney highlighted that the national legal system is marked by an anthropocentric culture, influenced by the Enlightenment, where a human takes central place as subject of rights and obligations. The industrial property rights and the author rights are results from human creation and as such they are subjected to certain requirements to be granted. Thus, currently, any patent developed or generated by AI conflicts with the industrial property rights protection system, mostly because the discussion is predicated on “what” or “who made de discovery, in detriment of the resulting product. However, the Federal Attorney asserted that the recognition of the existence of rights to a non-human is an unavoidable tendency.

In this sense, the Federal Attorney alludes to the need for specific legislation in Brazil to regulate creations developed by machines, which probably should be preceded by the celebration of international agreements to harmonize the subject.

The Federal Attorney highlighted that a legal discipline of the subject and the due recognition of industrial property rights to creations generated by agents other than human beings is necessary, because impacts on the preservation of the investments in research and development of new technologies, avoiding disincentives in the sector.

As direct result of the Legal Opinion, BRPTO published in the official bulletin, on September 6th, 2022, the withdraw of the patent application BR 112021008931-4 (PCT/IB2019/057809), filed by Dr Thaler, based on conclusions of the document.

However, it seems that the crucial question is whether the protection by patent of creations generated sole by AI will be possible.
Germany and EPO’s decisions point towards a positive answer to this question, as well as to possible solutions.

As we indicated above, the German Court asserted that a revised designation of the inventor stating “Stephen L. Thaler, PhD who prompted the artificial intelligence DABUS to create the invention” would be allowed. (15)

In the EPO decision, the Board stated that “The Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law.” (16)

Maybe, as the Brazil Federal Attorney states, this problem is a public policy matter and should be solved by the creation of international treaties to regulate and harmonize the matter and by the Congress of each country that should edit their legislation to grant protection to innovations generated by AI.

Either way, a solution must be found. It is clear the relevance of AI innovations to the economy and the importance to find a solution for the protection of creations generated by AI. A research made by Accenture in 2017, shows that “AI has the potential to boost rates of profitability by an average of 38 percent by 2035 and lead to an economic boost of US$14 trillion across 16 industries in 12 economies by 2035.” (17) Ryan Abbott affirms that “failing to allow protection for inventions generated by AI would mean that, in the future, businesses may not be able to use AI to invent, even when it becomes more effective than people in solving certain problems. Such a scenario would also encourage gamesmanship with patent offices by failing to declare a filing is based on an AI-generated invention.” (18)

Anyway, before a definitive solution that allows the protection of innovations generated sole by AI can be found, other questions should be addressed, as for example, if the same rules applied to protect inventions made by humans should be applied to grant a patent to an invention generated by AI.
(1) ABBOTT. Ryan. The Artificial Invention Project. WIPO Magazine. December 2019.
(2) In 2020, the USPTO refused the application (n. 16.524.350). In its decision, the Office stated that an inventor should be a natural person under the interpretation of the 35 USC paragraphs, as such 100 (a), 101 and 115(a).
The applicant, Dr Thaler, sought the US Federal Court to revert the decision. In first and second instances, the Federal Court denied the request. In the latest decision, issued 08 May, 2022, by the US Court of Appeal for the Federal Circuit (CAFC), the Court confirmed the USPTO considered views, determining that an AI system cannot be an inventor. CAFC decision.
(3) EPO J 0008/20. 
In this decision, the EPO Board of Appeal stated that under the European Patent Convention (EPC), an inventor designated in a patent application must be a human being. In support of its decision, the Bord referred to articles 60 (1) and 81.
(4) In the decision O/741/19, the United Kingdom Intellectual Property Office - UKIPO stated: “(…)DABUS is not a person as envisaged by sections 7 and 13 of the Act and so cannot be considered an inventor. However, even if I am wrong on this point, the applicant is still not entitled to apply for a patent simply by virtue of ownership of DABUS, because a satisfactory derivation of right has not been provided.” Decision.
(5) Other Countries that denied the possibility of AI being designated as inventor: South Korea, Taiwan, New Zealand.
(6) Dr Thaler Stephen filed patent application number 2019363177 to the Australian PTO. The Office notified the applicant that the application did not comply with Reg. 3.2c of the Patent Regulation 1991, as it did not designate a natural person as inventor. Dr Thaler appealed to the Australia Federal Court. The applicant received a favorable decision in first instance. But the Australia Full Federal Court overturned the first instance decision, in April 2022. In the decision Commissioner of Patents v Thaler [2022] FCAFC 62, the Court stated that “Only a natural person can be an inventor for the purposes of the Patents Act and Regulations.” Full decision.
(7) The German Federal Patents Court, in a ruling of November 11th, 2021 (published April 19, 2022), denied the possibility of AI being designated as inventor. However, the Court stated that a designation declaring as inventor “Stephen L Thaler, PhD who prompted the artificial intelligence DABUS to create the invention” was permitted. See a comment about this decision by James Nurton, in the Blog IP Watchdog. The full decision in German is available here.
(8) South Africa is a non-examining country. There is no substantial examination by the South African PTO to granting of a patent, only a formal exam.
Patent Number 2021/03155. The document can be accessed here.
(9) Legal Opinion nº 00024/2022/CGPI/PFE-INPI/PGF/AGU, available here.
(10) Free translation: Food Container and devices and method to attract greater attention.
(11) Law 9.279/96, article 6: “The author of an invention or of a utility model will be assured the right to obtain a patent that guarantees to him the property, under the terms established by this law.”
(12) Law 9.279/96, article 6.2: “A patent may be applied for by the author, his heirs or successors, by the assignee or by whoever the law or a work or service contract determines to be the owner.”
(13) Law 9.279/96, article 6.4:” The author will be named and qualified but may request his authorship not to be divulged.”
(14) Free translation. Civil Code, article 1: Every person is capable of rights and duties in the Civil Order.
(15) Free translation provided by James Nurton. NURTON, James. German Decision Could Provide an Answer to AI Inventorship. IPWatchdog. April 20, 2022. In this article, Nurton also complemented the stated by the German Court, in respect this decision: “The court said that the addition of the information about DABUS in the inventor designation was not contrary to the Patent Regulations. Moreover, the DPMA has discretion with regard to the data about the inventor that is published.
According to an unofficial translation of the decision seen by IPWatchdog, the court said: “in the absence of an explicit prohibition of unnecessary information in the Patent Regulations, an inventor (who may also be supported in this respect by his personal right as an inventor) should not necessarily be prevented from including additions of the kind at issue here in the official form P 2792.”
However, the court said it was not allowable to designate DABUS as the inventor; not to designate an inventor at all; nor to add “c/o Stephen L. Thaler, PhD” to the inventor designation and amend the description to say that the invention was created by an AI called DABUS.”
(16) EPO J 0008/20, p. 27.
(17) PURDY. Mark, DAUGHERTY. Paul. How AI boosts industry profits and innovation. Accenture. 2017,p.3.
(18) ABBOTT. Ryan. Op. cit.

By Henrique Steuer I. de Mello and Patricia Porto, Danneman Siemsen - 05/10/2022
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