Al Inventors - Why The Current Law Is Challenging Patent Attorneys Date: December 01, 2023 Performed by: Nicki Curtis, Senior Policy Advisor, UK Intellectual Property Office Advanced AI Systems & Inventions Two Key Challenges For The UK Patent System 1. Lack Of Any "Natural Personality" For A Machine Since a machine is not a natural person, it cannot be regarded as an inventor for the purposes of section 7 and 13 of the UK 1977 Patents Act 2. Ownership Of Rights If a human inventor cannot be identified under the current legislative framework, derivation of right through ownership of the invention does not meet the requirements of section 7(2) and hence the applicant is not entitled to a granted patent for the invention Definition Of Inventor Not Currently Globally Harmonized Any human inventors named in a patent application for an invention should be able to meet the relevant patent law tests different patent offices and courts use for inventorship with consistent results. However, for example: 1. UK: Section 7(3) PA 1977 "Inventor" in relation to an invention means the actual deviser of the invention and "joint inventor" shall be construed accordingly. 2. US: 35 USC 100(f) defines the term "inventor" as the individual who invented or discovered the subject-matter of the invention. 3. Conception is the touchstone of inventorship, where conception is "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." EP3564144 The Technical Field Of The Invention May Not Be CII A food or beverage container comprising:  A wall defining an internal chamber of the container, the wall having interior 5 and exterior surfaces and being of substantially uniform thickness;  Wherein the wall has a fractal profile with corresponding convex and concave fractal elements on corresponding ones of the interior and exterior surfaces; and  Wherein the convex and concave fractal elements form pits and bulges in the profile of the wall. DETERMINING INVENTORSHIP FOR AI INVENTIONS At A Practical Level, An Inventor Is Usually Not: 1. Someone/thing whose only contribution to devising an invention/reducing an invention to practice is by exercising ordinary skill in the art. 2. Someone/thing who only performs routine experiments or who assembles the invention only by exercising ordinary skill in the art. 3. Someone/thing whose only contribution is an obvious element of the invention. 4. Someone/thing who only conceives of the result to be obtained but not how to achieve it. 5. Someone/thing who only discovers a problem but not a solution. 6. Someone/thing who only provides a pointer or suggestion to an improvement but does nothing more than this. If How We Determine Inventorship Does Not Change Otherwise, Patentable Inventions May Not Be Patentable 1. Can we fudge? "Fudging" inventorship for filing purposes is not only unprofessional but unethical - and it is especially risky if there is subsequent litigation Consequences include: invalidation, lack of standing to sue etc., 2. Can we fix? Technically yes - if the law changes - however any human inventors named in a patent application for an invention should be able to meet the relevant patent law tests different patent offices and courts use for inventorship with consistent results. Various Consultations On Inventions Involving AI The Cipa Proposals Responding To The UKIPO Call For Views  The contribution of an Al system to an invention may be such that human involvement falls short of being the actual deviser of the invention due to a significant contribution from an Al system.  Section 7(3) PA 1977-could be amended to specify that a person responsible for the output of the Al system which provides the contribution should be regarded as the inventor.  Alternatively - the person responsible for the output from the Al system could be denoted as the first owner (rather than as the inventor) - but this creates a problem if international law and practice does not follow this approach.  Various other responses with different proposals were submitted in response to the call for views. Anyone Can File A Patent Application, But.. A patent for an invention belongs to the inventor initially: 1. If a human inventor cannot be named under the current legislative framework, ownership of a patent for the invention created will not be clear. 2. Patents are not cheap rights to obtain, particularly if global protection is desirable 3. Clarity and a globally harmonized solution to determining inventorship and consequent ownership of patent rights is needed 4. Ultimately, the origin of an invention should not affect its patentability.