In Marks & Clerk’s latest AI
Report 2024, we consider the use of AI in creating a
product design, which may be the subject of a Registered Design.
However, even if the AI-generated output itself meets the
requirements for being registered as a design, the question remains
as to who may qualify as the owner of the design.
In relation to patents, decisions on AI inventorship have been
passed down from the Supreme Court of the United States, the
European Patent Office Board of Appeal, and the UK Supreme Court.
If AI-generated technical advances cannot be patented, what rights
remain available to protect these works? We aim to explore the
various rights that may still be available for AI-generated works:
how inventions that build on AI-generated works can be protected;
what can be protected by Registered and Unregistered Design Rights;
and how the law differs in the UK, EU and USA.
In the judgement from the UK Supreme Court it was concluded that
Dr Stephen Thaler’s artificial intelligence system DABUS could
not be named as an inventor on a patent application as it is not a
person, but a machine. Accordingly, Dr Thaler cannot be named as
the successor in title or assignee of the patent application, as in
both cases those rights are passed from the inventor to the
applicant. Applications naming DABUS as the inventor were filed by
the Artificial Inventor Project in seventeen countries. In 2021, a
patent was granted in South Africa with DABUS named as an inventor.
However, it is important to note that in contrast to the UK, Europe
and the USA, South Africa does not examine patents before grant.
Although Dr Thaler holds the patent for now, there is a possibility
it may be revoked at any point in the future if it is found that he
was not entitled to the grant of the patent.
The UK, EPO and US decisions all centre on the same key points.
Can an artificial intelligence be an inventor for a patent? If
there is no inventor, can anyone validly apply to patent that work?
Lord Kitchin of the UK Supreme Court notes that the fractal
container and neural flare in question are technical advances
generated by an artificial intelligence – not inventions
devised by an inventor. The judgement of the UK Supreme Court also
suggests that if Dr Thaler named himself as the inventor, using
DABUS as a highly sophisticated tool, the decision may have been
different.
In the UK, a patent may be granted to the inventors or their
successors in title. The UK Supreme Court decision does not
introduce a new ground for refusing patent applications: instead,
the applications were deemed withdrawn for failure to validly name
an inventor within the sixteen-month time limit after filing the
application. Inventors who build on AI-generated technical
advances, for example by: using AI-enabled design software,
incorporating AI-generated components into their own new
inventions, or devising new manufacturing methods for AI-generated
devices, could conceivably be named as inventors and valid patents
potentially obtained.
According to the EPO Legal Board of Appeal, there is no
“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.” In the US, an AI system
may not be listed as a joint inventor. However, the user of the AI
system, the person named as the inventor, must fulfil the
requirements of the Pannu v. Iolab Corp. test, in that they must
contribute in some significant manner to the conception or
reduction to practice of the invention.
Dr Thaler is the creator and owner of DABUS. Therefore, there
was no question that he would qualify as the “user or the
owner” as described by the EPO. But who qualifies as the
inventor when the user does not own, or did not create the AI
system, such as with commercially available AI-enabled tools? In
the UK, the answer may be similar to provisions for
computer-generated copyright and designs being: “the person by
whom the arrangements necessary for the creation of the work are
undertaken.” However, it has yet to be determined whether this
person is the user of an AI system who provides a prompt for the
work or the person responsible for creating or training the AI
system in the first place.
While both Registered and Unregistered Design Rights are
available in the UK, they each have very different requirements.
For example, Registered Design Rights can protect the surface
ornamentation of a product, or part of a product, but cannot
protect features dictated solely by technical function. Similar to
a patent, Registered Designs afford monopoly rights over a
design.
By contrast, UK Unregistered Design Right (UDR) cannot protect
surface decoration but can protect features of shape and
configuration. As such, it can protect technical features, for
example features which are not visible during normal use. The bar
for subsistence is that an Unregistered Design must be original,
which is a significantly lower threshold than for both patents and
Registered Design Rights. Unregistered Design Right does not
protect against independent genesis, only against copying. The
proprietor of UK Unregistered Design Right is not necessarily the
designer, or their employer, but can be the first marketer of
“articles made to the design” in a qualifying country:
the UK, New Zealand, or Hong Kong. If the design is first made
available for sale outside of a qualifying country, or none of the
designer, their employer, or the first marketer are a
“qualifying person,” no Unregistered Design Right
subsists. A qualifying person means:
- an individual habitually resident in a qualifying country,
or - a body corporate or other body having legal personality
which—
- is formed under the law of a part of the United Kingdom or
another qualifying country, and - has in any qualifying country a place of business at which
substantial business activity is carried on.
- is formed under the law of a part of the United Kingdom or
The Copyright, Designs and Patents Act 1988 came into force in
August 1989. Section 220, which refers to qualification by
reference to first marketing, was amended in line with the
Intellectual Property Act 2014. Before the 2014 amendment, the
qualifying person was required to be “exclusively authorised
to put such articles on the market in the United Kingdom,”
where exclusive authorisation was given “by the person who
would have been first owner of Design Right as designer,
commissioner of the design or employer of the designer if he had
been a qualifying person, or by a person lawfully claiming under
such a person.”
As the law currently stands, there is no requirement in the UK
for the first marketer to be authorised by a person. There is also
no link required between the actual “designer” and the
first marketer, although the designer and their employer must not
be qualifying persons in order for the right to reside with the
first marketer. As such, at least in principle, it appears that an
AI-Generated design could qualify for UK Unregistered Design Right
if the first marketing of articles made to the design takes place
in a qualifying country and the first marketer meets the
requirements for a qualifying person. In which case, a UK user of
an AI tool, created by persons outside of the UK, could qualify for
UK UDR by first marketing an AI-generated design, even if the user
themselves is not considered to be “the person by whom the
arrangements necessary for the creation of the work are
undertaken”.
Unregistered Community Designs (UCD) in Europe (and the
post-Brexit UK equivalent right of Supplementary Unregistered
Design Right) are different from the UK UDR discussed above, both
in terms of what can be protected and in terms of ownership. In
fact, Unregistered Community Designs have similar requirements to
Registered Community Designs and, in both cases, the right belongs
to the designer or their successor in title or employer. Thus, it
follows that an AI-generated design, without having a person as a
designer, would not qualify as Unregistered or Registered Community
Designs in Europe.
In the US, there are no specific provisions for Unregistered
Design Rights. Registered Designs, known as design patents, are
used to protect the visual ornamental characteristics of a product.
Design patents may be granted to any person who has invented any
new, original and ornamental design for an article of manufacture.
Thus, it follows that an AI-generated design, without having a
person as an inventor, would not qualify for US Design Patent
protection.
In conclusion, while both Registered and Unregistered Design
Rights in the UK may afford some form of protection for
AI-generated works, each case has its limitations and it remains to
be seen as to whether reform will be required to provide sufficient
protection for AI-generated works in the future.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.