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From machines to plants: the battle continues over non-human inventions

Natasha Rao
26/11/2019

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United Kingdom

From machines to plants: the battle continues over non-human inventions

In a previous blog post, AI-generated inventions: no longer science fiction, we looked at the issues surrounding the patentability of AI-generated ideas. In this post, we explore the latest developments in the field of non-human inventions and think further about the implications for IP law.

AI-generated inventions: no longer science fiction (Part 2)

Following on from the filing of a number of patent applications listing a machine called 'Dabus' as the inventor, the UKIPO has amended its Formalities Manual on 28 October 2019 to make clear that it will not accept patent applications which list a machine as the inventor.

Section 3.05 of the Formalities Manual has been amended to include a provision that "an ‘AI Inventor’ is not acceptable as this does not identify ‘a person’ which is required by law. The consequence of failing to supply this is that the application is taken to be withdrawn under s.13(2)."

The UKIPO therefore appears to have drawn a line under AI inventors, seemingly advocating a position similar to that for copyright and registered designs (namely, that the person who "made the arrangements necessary for the creation" of a computer-generated work should be taken to be its author (CDPA 1988)). But is this an attractive approach for patents, where the inventor is supposed to be the "actual deviser of the invention" (under the Patents Act 1977)? This can be distinguished from (e.g.) copyright where the author is effectively rewarded with the right in recompense for their skill and labour.

The consequences of the UKIPO's new approach may not be significant in the short term, especially given that it is the applicant (rather than the inventor) who ultimately obtains patent protection. Parties will now likely list the machine's creator (or their employer) as the inventor in the patent application, with little practical impact.

However, with AI-generated inventions becoming more and more common, and with AI taking an increasingly active role in the inventive process, it is worth querying whether a narrow 'one-size-fits-all' approach to such inventions is helpful. While Dabus itself merely analyses prior art to identify gaps and (therefore) potentially patentable inventions, it is not impossible to envisage a situation in the future where a machine is intelligent enough to actively generate new ideas.

Plant-ing the flag: can photographs taken by flora or fauna attract UK copyright?

Meanwhile, in news that brings to mind the 'monkey selfie' dispute a few years ago (see our previous blog - Enough monkey business: Animals cannot sue for copyright infringement in the US), London Zoo has announced that one of its maidenhair ferns has succeeded in taking its own (somewhat blurry!) picture. This raises complex questions around the subsistence and ownership of any copyright in the photograph.

The plant in question generates selfies through the natural production of biomatter, which feeds the natural bacteria present in the soil and thus creates energy that can be harnessed by specially-created fuel cells. This energy can then be used to power a wide range of vital conservation tools remotely, including sensors, monitoring platforms and camera traps.

While the monkey selfie disputes were heard in the US courts, a number of European and UK cases can provide insight into the protectability of flora- or fauna-generated photographs. In Painer (C-145/10), the CJEU made clear that copyright can subsist in a photograph if the author makes free and creative choices in the production of that image (such as lighting, background, framing, angle and atmosphere). The courts have developed on this jurisprudence and have confirmed that copyright will also subsist where creative choices are made in respect of the selection of a particular photograph (as opposed to others), and where effort has been made to bring together different elements at the right time and place (Temple Island Collections v New English Teas).

As such, the fact that Pete the Plant 'pressed the button' when taking his own photograph – as 'Naruto' the monkey did for his selfie – may not be as relevant to copyright as the arrangements undertaken by London Zoo to set up the scene for the photograph. Given the technical difficulties in setting up the fuel cells, camera equipment, (etc) – and, presumably, in developing the resulting photograph – it is likely that these arrangements were also sufficient to attract copyright in the photo.

It remains to be tested, however, whether creative choices made by a non-human subject or co-creator will impinge upon this copyright. While Pete the Plant exerted little to no creative influence over the selfie he took, it is certainly conceivable that a UK court would decide – in the right circumstances – that the creative input of an animal was sufficient as to deprive the human author of copyright.