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26 October 2022
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The Non-possibility Of Naming Artificial Intelligence ("AI") As Inventor In A Patent Application, According To The Brazilian Patent Trademark Office ("BPTO").

the BPTO's Attorney General expressed its opinion about the non-possibility of appointing artificial intelligence as inventor in a Brazilian patent application, following the decisions...
Brazil Intellectual Property

the BPTO's Attorney General expressed its opinion about the non-possibility of appointing artificial intelligence as inventor in a Brazilian patent application, following the decisions rendered by several industrial property offices in the world, as well as corroborated by some court decisions.

Said opinion is the result of a real case, in which a patent application was requested for an invention generated autonomously by an artificial intelligence, without any human interference. The referred application indicates the AI as inventor and the AI owner as Applicant.

In most jurisdictions, the law has the purpose of recognizing human inventor's rights, ensuring that they receive due credit for the invention, as a result of a personality right, even if the property rights are not necessarily guaranteed. In most cases, the patent is owned by a company within the scope of employment relationships.

Within this context, and based on article 6, § 4º of the Brazilian Industrial Property law, which establishes that the inventor has the right to be named and identified as such, or to request that his name is not be disclosed, as a result of a patent invention, the BPTO has understood that the inventor must, necessarily, be a physical person with civil capacity, in accordance with article 1º, of the Brazilian Civil Code – "every person has civil rights and obligations", among other applicable legal rules.

It is worth mentioning that the European Patent Office (EPO) and the Intellectual Property Office of the United Kingdom (UKPTO) also examined this issue and decided to reject the application, on the grounds that the inventor must be a human being. The German patent court found a middle ground, authorizing the AI DABUS as a co-inventor and requiring the indication of the human inventor in the registration, while the Australian court concluded that there is "no specific provision that expressly excludes the possibility that AI can be named as inventor".

In practice, aiming to overcome this scenario of uncertainty, the owner of the patent or the person who has used the AI as a tool for the creation, declares himself as inventor, since patents offices do not object self-declaration. This fact seems fair when the result depends on human inventiveness to select a viable solution for the creation. However, when no human activity is required, unjustified credit can lead to the devaluation of human inventive activity, as very well raised by Ryan Abbott, in his article published in the Journal of the World Intellectual Property Organization, in December 2019.

In Brazil, as in most countries, the possibility to name an AI as inventor will only become acceptable upon an amendment and reform of local and international Intellectual Property Legislations.

Within the Industry 4.0 context in which we are living, the future of IP in light of the development of new technologies such as AI will certainly depend on a balance between fostering innovation through inventive AI and the protection of human inventors' rights, who could be compelled to take credit for a work not performed by him, devaluing, therefore, human inventive activity.

Although there are already three draft legislations under discussion in the Brazilian parliament, establishing principles, rights and duties for the use of AI in Brazil, these drafts do not encompass the issue of AI as subject of a patent, i.e., as an appointed inventor of an intellectual work.

The growing technological evolution will certainly result in other patents created by AIs, instigating the debate on the regularization of the inventorship.

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.

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