“Why cannot our own creations also create?”: AI systems can be patent inventors in Australia

An artificial intelligence system is capable of being named as an “inventor” of patentable subject matter, according to the Federal Court’s recent decision in Thaler v Commissioner of Patents.[1] Subject to any appeal, this decision has salient implications for the ways in which inventorship, ownership, and inventiveness might be assessed in Australia in the future.

Key takeaways

  • AI systems can be “inventors” for the purposes of the Patents Act 1990.
  • AI systems cannot be the owners of patents, but a patentee can, in certain circumstances, “derive” their entitlement to a patent from an AI “inventor”.
  • This differs from the position taken with respect to AI “inventors” in decisions in the UK, EU and US.
  • The decision also contrasts with the legislative requirements for human authors in other areas of intellectual property in Australia, such as copyright.
  • The decision may have implications for the way in which the entitlement and inventiveness of patentable subject matter are assessed in the future.

Click here to read our full analysis.


[1] Thaler v Commissioner of Patents [2021] FCA 879.

 

Shaun McVicar
Shaun McVicar
Partner, Melbourne
+61 3 9288 1587
Aaron Hayward
Aaron Hayward
Senior Associate, Sydney
+61 2 9225 5739
Tess Mierendorff
Tess Mierendorff
Senior Associate, Sydney
+61 2 9225 5596
Claire Dorse
Claire Dorse
Solicitor, Melbourne
+61 3 9288 1131

Sophie Yates
Sophie Yates
Solicitor, Sydney
+61 2 9322 4897

The Unwired Planet case – a year on

Last year the UK Supreme Court upheld Mr Justice Birss’ now famous decision in the Unwired Planet case. The Supreme Court’s decision has cemented the UK’s position as a key jurisdiction for FRAND disputes to be decided and opened the door for many more such cases to be heard in the UK.

In an article recently published in the Oxford Journal of Intellectual Property Law and Practice, Andrew Moir and David Webb look back at the key findings of the Supreme Court and consider what might be next in the world of FRAND disputes.

You can find the full article here.

Andrew Moir
Andrew Moir
Partner, Intellectual Property and Global Head of Cyber & Data Security
+44 20 7466 2773
David Webb
David Webb
Associate, London
+44 20 7466 2629

Change ahead? UKIPO publishes outcome of AI consultation and considers legislative reform

In September 2020 we reported that the UK Intellectual Property Office (‘UKIPO’) had launched a call for views on the relationship between artificial intelligence (‘AI’) and intellectual property rights.

The outcome of that consultation has now been published. We summarise the key takeaways below.

Key findings

The majority of respondents agreed that:

  • the law in relation to patents and copyright is intended to protect and incentivise human inventiveness and creativity, and may need to be reformed to accommodate AI (see below);
  • the law on trade marks, designs and trade secrets is currently adequate to respond to the challenges of AI; and
  • AI systems should not own intellectual property rights – but there were different opinions on whether works or inventions created by AI should be protected.
  • In relation to patents:
    • The current conditions for inventorship may act as a barrier to innovation in the context of AI-generated inventions
    • More clarity, predictability, and international harmonisation is required in patent exclusion practice in relation to the patenting of AI inventions
  • In relation to copyright:
    • Human creators should be “put first”, and works created solely by AI should either be not protected by copyright at all, or by a separate category of right with lesser durations and scope
    • Access to copyright-protected material is important for training AI systems, but respondents disagreed as to whether copyright restrictions make this difficult, or whether licensing is adequate and available to those who need it.

Actions

As a result of the consultation, the UKIPO now plans to:

  • Consult later this year on a range of possible patent policy options, including legislative change, for protecting AI-generated inventions which would not otherwise meet inventorship criteria
  • Publish enhanced IPO guidelines on patent exclusion practice for AI inventions
  • Commission an economic study around the role of IP in incentivising investment in the AI sector
  • Undertake a feasibility study of a “deposit” system to file AI training data disclosed within patent applications at the IPO
  • Consult on whether to limit copyright protection to human creation and whether to replace the existing protection for computer-generated works with a related right for AI-generated works.
  • Review the ways in which copyright owners licence their works for AI training purposes and consult on measures to make this easier.

Comment

One of the most interesting points to come out of this consultation is the plan for a further consultation on potential legislative reform to address the issue of patenting AI-generated inventions. This may effectively overrule the current UK position on AI inventorship set out in the High Court DABUS decision, and could, for example, provide a framework for attributing inventorship to AI systems, without granting AI systems any of the attendant rights which human inventors enjoy (importantly, the right to grant of a patent). In this way AI systems could be credited with their inventions, whilst the patents and associated rights could be owned by natural or legal persons.

Similarly, the plan to consult on carving-out AI-generated works from copyright is of great interest, particularly to those in the creative industries. Such a move would serve to recognise the value of human creativity, whilst reforming the provisions for computer-generated inventions (which, after all, were drafted decades ago), offers an exciting opportunity to create a new form of protection for AI-generated works, which would continue to incentivise innovation and investment in the field.

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant - London
+44 20 7466 2217
Laura Adde
Laura Adde
Associate - London
+44 20 7466 7491

Patent pending: the law on AI inventorship

Last year the UK High Court decided that an AI system cannot be named as inventor on a patent application within the meaning of the Patents Act 1977, simply because an AI is not a person – but with the UKIPO recently calling for views on AI inventorship, could a change in law be on the horizon?

The OUP Journal of Intellectual Property Law and Practice has published an article by Laura Adde, an Associate in our IP team, and Joel Smith, examining the UK position on AI inventorship in relation to patent applications.

Please click here to access the full article.

Laura Adde
Laura Adde
Associate - London
+44 20 7466 7491

 

Challenges to German ratification of the UPC Agreement trigger delay but possibly not for long

After the German Parliament’s upper house, the Bundesrat, passed the legislation to allow Germany to ratify the UPC Agreement (UPCA), there have been two challenges filed before the German Constitutional Court.  As a result, according to information from the Federal President’s office, he has been asked to delay his signature, which is required in order for the legislation to enter into force. This legislation includes the German consent to the Protocol on Provisional Application (PPA), which requires German ratification to enter into force. Therefore the Provisional Application Period (PAP) (see our previous post here) cannot presently commence, delaying the further preparation of the UPC.

One of the two challenges comes from Ingve Stjerna who mounted a successful challenge back in 2017 on the basis that the required two-thirds majority had not been achieved in the parliamentary vote.  Once this had been confirmed by the Constitutional Court, the measures returned to the Bundestag and Bundesrat and were passed by the latter on 18 December 2020.  The identity of the other applicants is not known other than that it is a joint application of an individual, an association and a company.

Like last time, Stjerna has applied for an interim injunctive measure requesting the court to make an order preventing German ratification pending the full decision of the court. The same application has been made in the other challenge. However, while last time the Court did not decide on the injunctive relief because the Federal President held off his signature until the full decision, we understand that this time the Constitutional Court is expected to decide on the interim injunction, so that if the interim injunction is dismissed, the ratification will proceed. It is unclear when this decision will issue. There are rumours that it might take only weeks, but as details of the complaints are not yet available it is not possible to say how substantial the complaints are. It can be expected that the Court will need to look into the complaints closely given the prejudice the interim decision creates for the full decision and further the fact that when Germany deposits its ratification the UPC will go ahead.

The Bundestag has decided to take as active a role as it can in the proceedings by joining the proceedings, which allows the Bundestag to make additional submissions and be represented by a lawyer (in addition to the opinion already submitted in January at the request of the Constitutional Court).

If the interim injunction applications are unsuccessful, the UPCA legislation ratification and the PPA ratification will be finalised and Germany could then deposit, inter alia, the PPA instrument, while the full decision of the court is still pending. This deposit would be instrumental in allowing the PAP to begin (the UPC Preparatory Committee website states that two more PPA ratifications are also required). Once the PAP is fully ratified, the practical arrangements for the court can be completed, such as recruitment of judges, finalization of IT systems etc.

We expect that if the interim injunction applications are rejected, Germany will deposit and not await the full decision.

For more on the UPC and the unitary patent (UP), see our Hub dedicated to the UPC and UP.

Authors  

Ina vom Feld
Ina vom Feld
Partner, IP, Dusseldorf
+49 211 975 59091

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, IP, London
+44 20 7466 2217

Enforcement of intellectual property rights across online platforms

Considering how to enforce your IP rights online and make maximum use of the take-down procedures? Read Victoria Horsey, Joanna Silver and Sabesh Asokan’s practical tips in their practice notes, recently updated and published in Practical Law:
Enforcement of intellectual property rights across online platforms: injunctions A checklist on the circumstances in which a rightsholder may be able to obtain an injunction against online intermediaries, in particular ISPs, in relation to online intellectual property right infringement, and the practical points that need to be considered.
Protecting brands by enforcement against intermediaries A guide to the options available to brand owners when seeking to enforce their rights against intermediaries, such as ISPs, including website-blocking injunctions, take-down notices and domain-name seizures.

Victoria Horsey
Victoria Horsey
Senior Associate, London
+44 20 7466 2701

Joanna Silver
Joanna Silver
Senior Associate, London
+44 20 7466 2315
Sabesh Asokan
Sabesh Asokan
Trainee, London
+44 20 7466 3231

The Trade and Cooperation Agreement and its impact on IP, Pharma and Medical Devices

The final Brexit agreement, the Trade and Cooperation Agreement (the “TCA”) was agreed between the UK and the EU on 24 December 2020. Within this agreement are provisions that set out the standards expected to be recognised (mutually) between the EU and the UK in relation to intellectual property (including SPCs and trade secrets). There are some provisions concerning pharmaceutical regulation and product standards, but overall there is a lack of mutual recognition, with the consequence that, for both pharmaceuticals and medical devices, there are now effectively two separate regimes for the EU and the UK.

Intellectual Property

The provisions on IP match or exceed those for IP set out in the various treaties to which the UK and EU have acceded (such as WIPO, WTO and TRIPS agreements).  These IP standards are to be maintained as a minimum. The cited objectives and scope in relation to intellectual property (see Title V) indicate the aims behind these provisions which are to:

(a) facilitate the production, provision and commercialisation of innovative and creative products and services between [the UK and the EU] by reducing distortions and impediments to such trade, thereby contributing to a more sustainable and inclusive economy; and

(b) ensure an adequate and effective level of protection and enforcement of intellectual property rights.

The provisions are intended to “complement and further specify the rights and obligations of each [of the UK and the EU] under the TRIPS Agreement and other international treaties in the field of intellectual property to which they are parties” and do not “preclude either [the UK or the EU] from introducing more extensive protection and enforcement of intellectual property rights than required under [this section of the TCA] provided that such protection and enforcement does not contravene [those provisions]”. However, there are aspects of current UK and EU IP law, such as the dilution provisions in trade mark law, to which the agreement does not refer, instead referring to the Paris Convention provisions on the protection of well known marks. Whether this will be a point of future divergence remains to be seen.

Both the UK and the EU also have the ability to develop their own exhaustion regimes. The provisions on geographical indications (“GIs”) indicate that a mutual future scheme has not be agreed although a review clause on GIs has, which provides that the UK and EU may (if both parties agree it is in their interests) use reasonable endeavours to agree rules for the protection and domestic enforcement of their GIs.

The UK Government’s Summary document that accompanies the TCA (see here) states that the agreement “includes mechanisms for cooperation and exchange of information on IP issues of mutual interest” and “retains regulatory flexibility for each [of the UK and the EU], enabling the UK to develop an IP system in line with [its] domestic priorities“, thus enabling the UK to diverge where it so requires.

We have already commented on the changes to the UK IP regime in the firm’s guide to Brexit here (see the IP section).

The Regulation of Medical Devices and Medicinal Products

Medical devices: The TCA has a chapter (4) (under Trade – Title I) on eliminating unnecessary technical barriers to trade which deals with conformity of standards. However, this only provides for an approach under which each party can agree that its standards bodies (including those relating to medical devices) will conform with international standards and will work together to influence those and to “foster bilateral cooperation with the standardising bodies of the other Party“.

For medical devices, it had been hoped that there would be at least mutual recognition of conformity assessment under which each of the EU and the UK would recognise the other’s certification bodies. However, as things stand, although Great Britain will continue to accept CE marked medical devices until 30 June 2023 those devices certified by the UK and marked as UKCA (standing for UK Conformity Assessed, as discussed in more detail in our post here), will not mutually recognised by the EU.

Medicinal Products: For medicinal products there is a dedicated annex in the TCA, Annex TBT-2 – Medicinal Products (the “Medicinal Products Annex”), which applies to all medicinal products listed in its Annex C, namely:

  • marketed medicinal products for human or veterinary use, including marketed biological and immunological products for human and veterinary use,
  • advanced therapy medicinal products,
  • active pharmaceutical ingredients for human or veterinary use,
  • investigational medicinal products,

with this list being subject to amended by the UK-EU Partnership Council (the main governing body for the agreement and supplementing agreements).

The aim of the Medicinal Product Annex is to “facilitate availability of medicines, promote public health and protect high levels of consumer and environmental protection in respect of medicinal products”.  To help achieve this aim, the Annex provides for:

  • the mutual recognition of Good Manufacturing Practice (“GMP”) inspections and certificates, meaning that manufacturing facilities do not need to undergo separate UK and EU inspections;
  • the individual inspection, on notice, by the EU or UK of each other’s facilities); and
  • for the suspension of the mutual recognition arrangements.

Further, the TCA also states that the EU and the UK should work together to implement agreed international guidelines and that any changes to either the UK or the EU’s regulation regime should be on 60 days’ notice and be subject to discussion by a Working Group on Medicinal Products, which will be established to enable mutual consultation. This Working Group on Medicinal Products will be under supervision of the Trade Specialised Committee on Technical Barriers to Trade, and will monitor and review implementation and ensure the proper functioning of the Medicinal Products Annex. It is noteworthy that the Medicinal Products Annex is specifically excluded from the TCA’s disputes mechanism, however, through its role in facilitating discussions and functioning as an appropriate forum for issues relating to Medicinal Products, it is hoped that it will be a sufficient mechanism to deal with any concerns.

When considering the confidentiality of information supporting applications for marketing authorisations (“MAs”), regulatory protection of pharmaceutical products, and Supplementary Protection Certificates (“SPC”) it is noteworthy that this is not included in the Medicinal Products Annex, but is included in the IP section (Title V) of the TCA.

  • In relation to regulatory data protection generally, the TCA requires that both the UK and the EU ensure that commercially confidential information submitted to obtain an MA is protected against disclosure to third parties, unless there is an overriding public interest or steps are taken to ensure the data is protected from unfair commercial use.
  • For the regulatory protections of data and market exclusivity, the TCA provides that, subject to any international agreement to which both the EU and the UK are party, and without prejudice to any additional periods of protection which either party may wish to provide for in its domestic law, these regulatory protections will be “for a limited period of time to be determined by domestic law”. This allows each of the UK and the EU to determine the length of such regulatory exclusivities under their own regulatory regimes.
  • For SPCs, the TCA records the agreement of both the UK and the EU to provide for further patent protection to compensate for the impact of regulatory administrative procedures but, again, the length of time is not stipulated.

The effect of these provisions is that they provide some comfort that these valuable forms of protection for medicinal products will be maintained by both the UK and the EU.

For detailed commentary on the new regulatory position for Pharma in the UK, and the impact on IP rights generally, see our series of posts on the HSF Intellectual Property Notes blog here.

Other provisions relevant to the pharmaceutical and medical device industry

The TCA also has provisions relating to the UK’s continued participation in EU programmes and on UK / EU cooperation on “serious cross-border threat[s] to health that are relevant for the pharmaceutical industry.

  • Subject to the UK making financial contributions, Part 5 of the TCA includes agreement on the UK’s continued participation in EU programmes, including the EU’s research and innovation funding programme, Horizon Europe.
  • UK / EU cooperation on serious cross-border threat[s] to health is covered by the TCA including agreement between the UK and the EU on emergency relief in relation to importation requirements, tax and road transport exemptions, and agreement to cooperate in relation to international health security systems.

Future developments

Although tariff free and quota-free trade has been agreed, there is little mutual recognition of regulatory provisions. This may not be the end of negotiations, with automatic reviews every 5 years written into the TCA and termination possible on 12 months’ notice.  See the HSF Brexit blog for further information, and the updated Intellectual Property section of our Beyond Brexit Legal Guide is now available, in which we look at the impact of the end of the Brexit transition period on:

  • EU trade mark rights
  • Community design rights
  • Patents & SPCs
  • Copyright
  • Designs
  • .eu Domain names
  • Plant variety rights
  • sui generis database rights
  • Exhaustion of IP rights
  • Licensing
  • Disputes

Key contacts and authors

Jonathan Turnbull
Jonathan Turnbull
Partner, London
+44 20 7466 2174
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217
George McCubbin
George McCubbin
Senior Associate, London
+44 20 7466 2764
Priyanka Madan
Priyanka Madan
Associate - London
+44 20 7466 2986

As the Bundestag passes the legislation to ratify the UPC Agreement, the UPC may finally open its doors in 2022

The Unified Patent Court (UPC) took another step closer to coming into being on November 26 with a Bundestag vote passing the legislation necessary for Germany to ratify the UPC Agreement and the Protocol on Provisional Application with (more than) the two thirds majority found to be required by the German Federal Constitutional Court in its decision rejecting the initial vote on these measures as unconstitutional for lack of sufficient majority (decision dated 13 February 2020, announced 20 March 2020).

German ratification – next steps and any further challenges?

Germany is the last required ratifier of the UPC Agreement (UPCA).  Ratification by at least 13 contracting states is required for the UPCA to enter into force, additionally this must include the “three States in which the highest number of European patents was in force in the year preceding the year in which the signature of the Agreement takes place”. With UK having withdrawn, those three countries are France, Germany and Italy. So far 15 contracting Member States have ratified, including France and Italy (see the ratification table here) so Germany’s ratification is the last piece of the jigsaw for the UPCA to come into force.

The legislation will now be submitted to the German upper house (Bundesrat) where approval is expected to take place on December 18. The next steps after that are a countersignature by the Federal Government (a formality) and the signature of the Federal President (so-called “Ausfertigung” or legalization). This is followed by the publication in the Federal Law Gazette, by which the law enters into force, allowing the Federal Government to deposit the ratification of the UPCA and sign the Protocol.

In the first German ratification attempt the Federal President did not sign because a constitutional challenge had been filed after the Bundesrat vote and the Constitutional Court asked the Federal President to delay his signature to await the outcome of the challenge, which in the end was successful based on the majority vote issue.

A “Foundation for a Free Information Infrastructure” (FFII) has following the Bundestag vote started a crowd-funding campaign for a new constitutional challenge. However, unless the FFII or others started preparation a while ago it seems highly unlikely that such a challenge could be filed before the law enters into force. Further, it seems unlikely that the Constitutional Court will once again ask the Federal President to delay his signature.

In addition, even though the Constitutional Court referred in its decision to a number of issues as relevant but either not substantiated enough in the constitutional challenge or not necessary to decide due to the successful majority challenge, it appears unlikely that any further challenge would succeed.

Once the German ratification is deposited, the UPC will commence on the 1st day of the fourth month after the month of the deposit of instrument of ratification. Germany is expected to delay the deposit of its ratification of the UPCA until the UPC has become fully operational during a period of provisional application as explained further below.

The UPC “Provisional Application” phase

The Protocol on Provisional Application (PPA) provides for a provisional application of the UPCA before the UPCA actually enters into force. As well as ratifying the UPCA, participating states need to sign the PPA, so that the provisional application stage can start.

By signing the PPA, the signatory states agree to apply the institutional, organisational and financial sections of the UPCA provisionally. Once the Protocol enters into force, the UPC organisation (as such) will be created and acquire legal personality. The Administrative Committee, the Budget Committee and the Advisory Committee will be established at the start of provisional application stage and will then take over the responsibility of the preparations from the UPC Preparatory Committee.

The provisional application stage allows the final preparations to be made for the commencement of the UPC in the certain knowledge that it will actually commence. This allows the employment of judges for example, and the finalisation of court preparations. The UPC rules of procedure also need to be finalised during this period.

There is no prescribed time-frame for the provisional application period, however, it is currently expected that it may take approximately 12 months.

In order for the PPA to enter into force, in addition to Germany, two other UPCA contracting Member States still need to sign the Protocol. It is currently envisaged that this could happen by February 2021.

Thus, assuming that the provisional application starts in February 2021 and that Germany deposits the ratification of the UPCA by February 2022, thereby triggering the prescribed period running up to the commencement of the UPC, the UPC could then open its doors on June 1, 2022.

Support for the UPC from the Commission and the EPO

The day before the Budnestag vote, the Commission released its EU IP action plan: Making the most of the EU’s innovative potential – An intellectual property action plan to support the EU’s recovery and resilience (25 November 2020) – see our blog post here. The Commission considers the unitary patent (UP) and the UPC as key to ensure that innovators have access to “fast, effective and affordable protection tools“. The Commission states that once the ratification process is completed, the Commission will work with the EPO and Member States to make the UPC/unitary patent system operational across the contracting EU Member States and will encourage the Member States that have not done so to join the system (Spain, Poland and Croatia).

The EPO President António Campinos responded to the Bundestag vote saying that, the so-called “the Unitary Patent package” (ie the UPC/unitary patent system) “will make Europe even more attractive for innovation and investors – and help with economic recovery in light of the COVID-19 crisis.” He declared that the EPO stands ready to register the first UPs, once the UPCA comes into force. The UPC is the only court in which UPs can be litigated. Campinos expects the UPC to start its work in 2022.

For more on the UPC and unitary patent system see our dedicated hub here.

Authors 

Sophie Rich
Sophie Rich
Partner, Global Head of IP, London
+44 20 7466 2294
Ina vom Feld
Ina vom Feld
Partner, IP, Dusseldorf
+49 211 975 59091
Sebastian Moore
Sebastian Moore
Partner, IP, Milan and London
+39 02 3602 1398

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, IP, London
+44 20 7466 2217