With decisions from the US, Australia, and South Africa, the dispute about naming and AI as a patent inventor is heating up.  Some argue that long-term industrial competitiveness will be decided by how countries answer this question.

 

More on Chris Mammen.

 

SPEAKERS

Chris Mammen, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to this week's episode of the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacey. And with me today I have Chris Mammen, a partner at the firm of Womble Bond and Dickinson. Chris is an expert in AI and patentability. So Chris, we've been talking about AI as a named inventor on patents since 2019, kind of seriously. And it first it seemed like a novelty question that might show up on a law school exam, but it didn't have a lot of practical impact. Things seem to be changing. So tell us why we should care about whether AI can be named as an inventor?

 

Chris Mammen  00:48

Thanks, Wayne. Um, yeah, this is a this is an issue that kind of raged into the forum, the summer of 2019, and a couple of months later seem to be largely resolved with decisions out of the US, the European Patent Office and the UK IP office all saying that, no, in fact, AI algorithms cannot be named inventors on patents. And so we had a nice parlor discussion for for a couple of months, that was very interesting. And then things went quiet. It's changed in the last two or three weeks. Because the the proponents of AI as an inventor, in particularly Professor Ryan Abbott, out of the UK, and Dr. Steven Thaler out of Missouri, have continued to pursue patenting of their inventions, their algorithms', inventions, and a couple of weeks ago, South Africa was the first country to grant a patent to the algorithm Davos, which is Dr. Taylor's AI algorithm. And the next day, a court in Australia similarly ruled that it would be theoretically possible, at least for an AI to be a named inventor under Australian patent law. And so those were those were the first two rulings that I'm aware of that that held that an AI can be a named inventor. And then last week, Judge Brinkum in the Eastern District of Virginia issued a long awaited ruling in the US on the litigation over the patent offices denial, the US Patent Office, is denial. Holding that, yes. In fact, in the US, an AI cannot be a named inventor. So right. You know, as we sit here, right now, we now have different countries reaching different conclusions about whether or not an AI can be an inventor. So it's, it's no longer this interesting side discussion, and is actually something that we're going to need to dig in on and figure out eventually, how we want to resolve this question.

 

Wayne Stacy  03:13

We generally when we talk about whether AI is an inventor, we we shorthand that discussion and have it from a policy level. But the reality is when you look at what happened in South Africa, or in Australia, or Eastern District of Virginia, right now, it's all about rules and statutory interpretation rather than policy. Am I reading those decisions correctly.

 

Chris Mammen  03:37

Yeah, I think that's right. If we look, if we look at the South African decision, um, you know, South Africa has a patent registration regime. And so there's not the same kind of examination that we're used to looking at from the USPTO. And their patent law does not define inventor. So, you know, those factors add up to, you know, not being a significant reason not to grant an AI, a patent in South under South African law. Under Australian law, inventor is defined as a person and t