Impact case study database

Based on Abbott’s publications, an international legal team submitted the first two patent applications for AI-generated inventions. An AI machine, ‘DABUS,’ was responsible for both, one consisting of a flashing light that uniquely draws the eye in emergency situations, the other a container (to hold beverages for example) with a profile of pits and bulges that enables multiple containers to be coupled, while also improving grip and heat transfer. These applications directly advocate for legal positions advanced by Abbott’s published works and his research is identified as a driving force behind the filings [S1, S2]. The two patent applications are pending consideration or are under appeal in the UK, European Patent Office, US, Canada, Australia, Germany, Israel, Taiwan, China, Korea, India, and Japan.

Abbott’s research and direct contribution to the applications has (a) caused regulatory bodies to produce clear policies determining that AI-generated inventions are not currently patentable; (b) enabled these bodies to identify the need for new laws and policies to reflect the reality of AI-generated invention; (c) led to judicial appeals across jurisdictions, and (d) prompted international action and co-operation in the area.

1. The UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO) agreed that DABUS’s inventions were sufficiently unique to be patented but both denied the applications, on the basis that only natural persons can be inventors. As a result, the law in the field is now that AI-inventions are not patentable, unless the decisions are overturned [S3, S4]. These new legal rulings help provide certainty to businesses struggling to determine how to protect the results of AI-based innovation. Siemens, for example, reported in 2019 that they had instances of AI-generated inventions and have not been able to apply for patent protection because they could not identify a human inventor. (See, [R6] above, p.10)

2. In rejecting the applications, a UKIPO official took the unusual step of noting the importance of this topic and the need for change that arises: “As the applicant says, inventions created by AI machines are likely to become more prevalent in future and there is a legitimate question as to how or whether the patent system should handle such inventions. I have found that the present system does not cater for such inventions and it was never anticipated that it would, but times have changed and technology has moved on. It is right that this is debated more widely and that any changes to the law be considered in the context of such a debate, and not shoehorned arbitrarily into existing legislation.” [S3]. There is specific reference to the DABUS applications in informing questions 2-6 of the UKIPO September 2020 Artificial Intelligence Call for Views: Patents. [S9]

3. The UKIPO, EPO, as well as US Patent and Trademark Office, rejections are being appealed. Abbott’s work is instrumental in guiding preparations for the appeals [S1]. An appeal from the UKIPO decision was rejected by the High Court and a right to appeal that decision was granted by the Court of Appeal on 4^th December 2020 because, “[t]he principle at stake is an important one.” (Rt. Hon. Lord Justice Floyd)

4. Consultations: Abbott’s research has helped prompt international recognition of the need to address protection for AI-generated inventions. UKIPO [S9], USPTO [S7] and WIPO launched public requests for consultation to develop new policies on AI-generated inventions following the DABUS applications. These public consultations are another tangible effect of the impact that Abbott’s research is having through the DABUS litigation.

5. Shaping policy recommendations: Additionally, Abbott’s research has had specific impact in shaping policy recommendations issued by international patent law institutions. This further impact is evidenced in (1) a White Paper for the World Economic Forum which heavily cites his publications [S5]; (2) his membership of the European Commission Expert Working Group on New Technologies Formation; (3 ) the frequent citation of his academic work (13 times) in the September 2020 European Commission Final Report on ‘Trends and Developments in Artificial Intelligence’ [S6]; (4) citation of his work in the October 2020 USPTO Report on Public Views on Artificial Intelligence and Intellectual Property Policy [S7]; (5) reference to his academic work by think tanks including the Information Technology and Innovation Foundation (ITIF) [S8].

Abbott’s expertise is sought after, and his insights are directing debate in the field. Lord Justice Kitchin (UK Supreme Court) noted in a UKIPO / WIPO-sponsored keynote address that “Professor Ryan Abbott points out in one of his many interesting papers in this area that [AI-generated invention] has been a reality for some time <…>” [S10]. He has been invited to present his work at industry events such as the annual meetings of the American Chemical Society, UK Bioindustry Association, and the International Association for the Protection of Intellectual Property, and to give advice directly to businesses seeking to apply AI to innovation (including to IBM, Novartis, and Warner Music). The patent applications, and Abbott’s involvement, received extensive press coverage, bringing the debate to a public audience, with the filings being first published by the Financial Times [S11]. Subsequent stories on the cases appeared in prominent media including the BBC, and Wall Street Journal [S12]. Managing IP Magazine, lists Abbott as one of the 50 most influential people in IP in 2019. The magazine writes, “Ryan Abbott is a leading academic specialising in law and technology, IP and life sciences. His work on artificial intelligence (AI) and IP has contributed to the international dialogue on how new technologies are challenging existing legal standards.” [S13].