Guess Who’s in the Kitchen? (Vorwerk v. Lidl)

The Commercial Court No. 5 of Barcelona, specializing in patent law, delivered a Judgement on January 19, 2021 (in Spanish) connected to proceedings 1231/2019 (Judgement), involving German company Vorwerk & Co. Interholding GmbH (Vorwerk), manufacturer of the kitchen machine known as Thermomix, against the Spanish subsidiary of Lidl supermarkets (Lidl), distributor of the kitchen machine known as Monsieur Cuisine Connect (MCC) under Silvercrest brand.

The case relates to the infringement of European Patent EP 1269 898, validated in Spain through Spanish Patent ES 201589. Lidl, which commercialized its kitchen robot MCC in Spain from June 2018 would have infringed the “Thermomix patent“, owned by Vorwerk. As a result, Vorwerk launched the relevant proceedings for patent infringement against Lidl, who counterclaimed patent invalidity as a defence, arguing that ES 201589 patent: (i) extended the protection conferred pursuant 123(3) European Patent Convention (EPC); (ii) lacked novelty pursuant Art. 54 EPC; and it was not susceptible of industrial application pursuant Art. 57 EPC – also, the relevant Spanish Patent Law provisions were invoked.

Albeit the decision involved many other aspects, the debate focused on the food weighing function protected under patent EP 1269 898. This function, having an independent circuit from the circuit that controls the movement of the mixing bowl, allows Thermomix weighing the food while the machine works, therefore having two different circuits for mixing and weighing.

The Court dismissed the invalidity counterclaim filed by Lidl and found there was an direct infringement of European Patent EP 1269898, validated in Spain as Spanish Patent ES 201589.

In the Judgement Lidl was ordered to, inter alia: (i) cease any import, storage, commercialization -even through its distributors-, or advertising of the kitchen machine MCC; and (ii) pay damages, to be calculated in the enforcement phase of the Judgement, once the decision becomes final.

However, the enforcement of the Judgement – including the withdrawal of allegedly infringing products- will have to wait, since Lidl recently filed an appeal to the above mentioned decision. Now, the Court of Appeals of Barcelona shall decide on the merits of a case that, without a doubt, may have a paramount impact on the ability to commercialize the MCC, not only within the Spanish territory, but in other member States of the European Patent Office where EP 1269898 patent was validated.

Rubén Cano

Commercial Court N. 5 of Barcelona, January 19, 2021 – Proceedings 1231/2019 (Vorwerk & Co. Interholding GmbH v. Lidl Supermercados S.A)

Hands off my database!

What is wrong with a content aggregator harvesting content from third parties’ database and using it to provide its own service? This is – in a nutshell – the question that, on 14 January 2021, Advocate General Szpunar tried to answer with his opinion on Case C-762/19 (full text available here).

The case brought to the attention of the CJEU concerns the scope of the sui generis right established by Article 7 of Directive 96/9/EC, following the request for a preliminary ruling issued by the Regional Court in Riga, Latvia. The dispute was established between two Latvian companies active in the internet job-advertising market: SIA CV-Online Latvia (hereinafter, “CV-Online”) and SIA Melons (hereinafter, “Melons”).

CV-Online is an internet job-advertising company that operates through a website where employers post job offers upon payment of a fee. Once submitted, the offers are collected and organized in a database, which uses microdata meta tags (a sort of key words for search engines) in order to simplify searches and indexation. Melons, on the other hand, is a specialized search engine that accesses existing job advertising websites and gathers all relevant job posts for specific users searches. In doing so, Melons includes hyperlinks to the original ads on the website of first publication and also integrates the same meta tags used, so as to be able to take advantage of better positioning results on generalist search engines.

A.G. Szpunar suggests that the violation of the sui generis rights pertaining CV-Online is apparent, as the copying and indexing of databases fall within the definition of extraction and reutilization under Article 7(1) of Directive 96/9/EC. However, the question underlined by the A.G. is: how far can the right-holder go in preventing such extraction and re-utilization?

In order for a right-holder to lawfully exercise such rights, two elements should be met: one deriving from the protection afforded by the sui generis right, the other stemming from certain specific aspects of competition.

The first condition is due to the economic connotation of the sui generis right accorded by Article 7(1) of Directive 96/9/EC. Indeed, the protection afforded by the sui generis right may be granted only to those databases which can be proved to have required a substantial investment and only if the extraction or reutilization activities negatively affect such investment.

The second condition stems from the rationale of the sui generis right, that is closer to unfair competition, rather than to intellectual property rights. Indeed, its scope is not only to ensure the recovery of the investments made by the database creators, but it is also to protect them from commercial parasitism.

That said, A.G. Szpunar stresses the importance to consider that both the conduct of third parties (like Melons) as well as the very exercise of the sui generis right could amount to an unfair competition practice. Indeed, there could be a risk that database makers, rather than intending to prevent the creation of parasitical third parties products, may aim at establishing a dominant position in a relevant market.

Consequently, A.G. Szpunar suggests that the referring court should verify whether (i) the extraction or reutilization of the database has indeed taken place; (ii) it is proved that the database required a substantial investment; and (iii) such extraction or reutilization integrates a threat to the possibilities of recovering such investment. Should all the above conditions be met, the national court should also verify whether the exercise of these rights could result in an abuse of a dominant position under EU or national laws.

Giovanni Rindi

Advocate General Szpunar, opinion of 14 January 2021, Case C-762/19, SIA ‘CV-Online Latvia’ v SIA ‘Melons’

Unwanted Email Advertising: Trivial Damage or Significant Data Protection Violation?

In a case concerning damages for unwanted email advertising as a data protection violation, the Federal Constitutional Court in Germany (BVerfG) recently ruled, that the European Court of Justice (ECJ) has to decide on the interpretation of the prerequisites and scope of Art. 82 (1) GDPR. It has to be clarified how Art. 82 (1) GDPR is to be interpreted against the background of Recital 146. In other words, under which conditions the article would grant a claim for monetary compensation.              

The plaintiff, a German lawyer, had received one (!) unintentional advertising email and sued for injunctive relief, access to the stored data and damages of at least 500 €. Whilst the District Court of Goslar (September 7, 2019 – Case No. 28 C 7/19) upheld the claim for injunctive relief and access, it refused to award immaterial damages. The judges claimed that these were not evident. Hence, the threshold for a monetary compensation for a violation of personality rights had not been exceeded. In response, the plaintiff decided to file a constitutional complaint, arguing that the decision of the District Court violated his right to the lawful judge of Article 101 (1) sentence 2 of the German Basic Law (GG). He claimed that the District Court had wrongly refrained from submitting the question of the threshold for GDPR damage claims to the ECJ for a preliminary ruling.            

In the ruling of the BVerfG, the judges now emphasized that the claim for damages under Art. 82 GDPR may not be denied just because of a minor or trivial loss. The Federal Constitutional Court underlined in fact, that the District Court would have had to make a preliminary reference to the ECJ beforehand. Hence, the plaintiff’s right to the lawful judge according to Article 101 (1) sentence 2 of the German Basic Law (GG) had been violated: the District Court did not comply with the obligation to refer the matter to the ECJ by way of preliminary ruling proceedings pursuant to Article 267 (3) of the Treaty on the Functioning of the European Union (TFEU). The District Court disregarded this obligation by interpreting European Union law itself.                

The court in Goslar must now decide anew and it can be assumed that the judges will refer the questions to the ECJ. It is to be hoped, that the European judges will define a de minimis threshold for damages due to data protection violations. At the same time, clarification of all underlying issues is not expected. However, general principles of high practical relevance can be laid down, already discussed in literature and case law.

Dario Haux

German Federal Constitutional Court, Decision of the 2nd Chamber of the First Senate, January 14th 2021, 1 BvR 2853/19 -, 1–24

“This article was automatically written by Tencent Dreamwriter robot”

“This article was automatically written by Tencent Dreamwriter robot”

Nanshan’s Court got certainly worldwide noticed for a pivotal decision, namely “Shenzhen Tencent Computer System Co., Ltd. (“Tencent”) vs Shanghai Yingxu Technology Co., Ltd. (“Yingxu Technology”)” (full text available here).

With this judgement, the Chinese Court ruled in favor of recognizing protection to AI-generated content under Copyright Law.  

Specifically:

  • In August 2018, Tencent published an article on the Shangai stock exchange index on its website, which terminated with the following statement: “This article was automatically written by Tencent Dreamwriter robot”;
  • The article was written with the support of the software Dreamwriter;
  • Tencent claimed that Dreamwriter computer software was a data set and algorithm-based intelligent writing assistance system, independently developed by Tencent Technology (Beijing) Co., Ltd (an affiliate of Tencent), then licensed to Tencent (see claim here);
  • Yingxun Technology published the same article on the Shangai stock exchange index on its website;
  • Tencent claimed, inter alia, copyright infringement since, according to its point of view, the article on Shangai stock exchange was protectable under copyright law and the rights were attributable to it;
  • The Chinese Court (specifically, the Court of Nanshan) ruled in favor of recognizing protection to an article written with the support of an AI under Chinese Copyright Law, sustaining – in brief – that the article (a) could be included within the scope of protection being a literary work and that (b) “creative choices” were made by the team who selected the data to be included in the AI which then was involved in the making of the work.

The decision here addressed represents a pivotal decision with reference to AI-generated content protection.

Notwithstanding the above, please note that of course the discussion on protectability and ownership of AI-generated content is still open at a worldwide level.

Francesca Di Lazzaro and Maria Di Gravio

Court of Nanshan (District of Shenzhen) 24 December 2019 – Case No. (2019) Yue 0305 Min Chu No. 14010, Shenzen Tencent Computer System Co., Ltd. vs Shanghai Yingxu Technology Co., Ltd.

Marketing communications, food & beverage and children’s protection. IAP adopts a new regulation.

On 9th February, the Italian Institute for Advertising Self-Regulation  published the new regulation for Marketing Communications relating to food and beverages, the protection of children and their proper nutrition (full text available here).

In particular, these rules aim at integrating the provisions of the Code of Marketing Communication Self-Regulation which, in art.11, pays particular attention to the protection of children, who can be identified as individuals under 12 years old.

The new regulation focuses on the presentation of food products and beverages, affirming that it must avoid statements that could mislead children, including through omissions, ambiguities or hyperbolical overstatements, especially as regards the nutritional characteristics of the product.

Furthermore, Article 5 of the Regulation states that marketing communication must not stress the positive qualities of the nutritional aspects of foods or beverages that are dependent on fat, trans-fatty acids, sugar, sodium or salt, the over-intake of which is not recommended.

The regulation is in addition and without prejudice to the provisions of the digital chart, which constitutes the rules that social media influencers and vloggers must observe in order to ensure the distinctiveness of the commercial message.

Matteo Falcolini

Artificial inventors – the EPO President requested to comment on the Dabus case

We already referred about the Dabus case (see here, and here) and that appeal proceedings are pending before the EPO, against two decisions of 27 January 2020 that refused the applications designating an AI system as the inventor.

Now the EPO President requested the Board of Appeal to comment on the relevant questions (here). The EPO decisions held that the inventor must be a human being to fulfil the requirement for designation of inventor in the procedural and substantive terms. This seems also an international standard (based on discussions with the IP5 offices). The applicant contests such a standard. Given the importance of the issue and that this is the first time the EPO will take formal position on this, the President requested to comment on it.

The Board of Appeal granted the EPO President’s request (here). There are two main topics on which he wishes to comment. And the BoA made some additional thoughts:
(i) If the inventor must be a human being from a formal and substantive angle – what is the purpose of such requirement? Is it redundant?

The BoA advanced that:

  1. one possible view is that the sole purpose is to enhance the protection of the inventor’s right to be mentioned as such. In this case, if the application does not mention a person with legal personality as inventor, it could be argued that the requirement to designate the inventor is redundant.  This would be based on the concept that human intervention is not an inherent element of a patentable invention under Art. 52 EPC.
  2. On the other hand, if the concept of “invention” was limited to human-made inventions, the function of the inventor designation rules would also be to facilitate examination of a substantial requirement.
Risultato immagini per robots making experiments

(ii) Does the EPO have competence to examine the acquisition of the rights on the invention? If yes, what principles should the EPO apply?

The President now has 3 months to deliver his comments. More updates soon.

Francesco Banterle

EPO Board of Appeal, communication of 1 February 2021, in the appeal proceedings relating EP 3564144

The Italian Competition Authority fines Facebook for misleading practices regarding data, chapter two

Today, the Italian Competition Authority (ICA) issued a 7 million euro fine to Facebook Ireland Ltd and Facebook Inc for failing to comply with the request to end their unfair practice regarding the use of users’ personal data, and to publish a due rectification (full text in Italian here).

Indeed, in November 2018 the ICA found the information given by Facebook to the users at the moment of the creation of the account misleading, due to the lack of adequate disclosure about the economic value of their personal data, which are monetized through the supply of targeted advertising (case PS1112). On the contrary, the ICA found that Facebook emphasized the free nature of the service, inducing users into making a transaction that they would not have taken otherwise. The misleading nature of such practice has also been confirmed by the Italian administrative judge (T.A.R. Lazio, decisions nn. 260/2020 and 261/2020).

The ICA advances that Facebook, despite having removed the claim about the free-of-charge nature of the service, still fails to provide users with clear information on the role of data as a means of payment in the exchange.

Alessandro Cavalieri

Italian Competition Authority, decision of 17 February 2021, ICA v. Facebook Ireland Ltd and Facebook Inc

No artificial inventors in UK, again

On 21 September 2020 (full text, here), the England and Wales High Court (Patents Court – Judge Marcus Smith) dismissed the appeal brought by Dr. Thaler against the IPO decision of 4 December 2019 rejecting two patent applications indicating as inventor an AI system, a creativity machine called “Dabus”. 

Can an AI be an inventor? Not yet. | MIT Technology Review
AI inventor MS TECH / GETTY, PIXABAY

We reported that both the USPTO and the EPO rejected the corresponding US and EU applications filed by Dr. Thaler, with Dabus named as the inventor (here). Similarly, in its previous decision the IPO held that Dabus fails to meet the requirements of the Patents Act 1977 and that the “inventor” must be a person – meaning a natural person and not merely a legal person. Secondly, there could be no transfer of patent right to Dr. Thaler. Dabus cannot “own” anything capable of being transferred and had no power to assign any rights it might have.

The High Court substantially confirmed the IPO decision and dismissed the various grounds of appeal advanced by Dr. Thaler:

  • Inventor must be a person. Dr. Thaler did not contend that Dabus was a natural or legal person, and focussed instead on the contention that the “inventor” of statute is a legal construct detached from the question of personality. Inventorship should not be a substantial condition of the grant of patent.  On the contrary, the Court held that under the Patents Act 1977 the applicant for a patent must be a “person” and a patent can only be granted to a “person” – whatever the meaning of the term “inventor”. This means that there is a correlation between the inventor and the first “owner” of the invention. Also, the inventor is defined by the Patents Act 1977 as the “actual deviser” of the invention. Although there is no express statement that an inventor must be a person, the term “deviser” at least implies “someone” devising “something”. The natural reading is thus that the inventor is a person and the invention a thing.
  • AI as “inventor” is incapable of conveying any property on the invention to its owner. The law differentiates between the first creation of rights in property and their subsequent transfer. Even if Dabus was capable of being an “inventor”, Dabus would by reason of its status as a thing a not a person be incapable of “own” any initial right and of conveying any property to Dr. Thaler. In sum, AI lacks any ability to “own” and “transfer”.
  • No analogy with computer-generated works. Any analogy with computer-generated works provisions under UK copyright law is to be rejected. The Court emphasized the formal role of patent applications: merely inventing something does not result in a patent being granted to the inventor. A patent must be applied for and that must be done by a person. There must either be an application by the inventor (not Dabus as it is not an inventor nor a person) or the inventor must have transferred the right to apply enabling Dr. Thaler to apply (which again cannot be the case).
Astrological and mystic robot USD 99231 (1936) by J.P. Wilson (as noticed here)

This decision comes as no surprise and furhter confirms the same position taken by the USPTO and the EPO. According to the Court, despite the absent definition of “inventor”, the law is clear (and so the concept of “inventor” as “person”). And the emerging role of AI as inventor is mostly a policy problem that lawmakers (not Courts) have to cope with.

The question is however still debated. On 7 September 2020, the UK government published a call for views on the future relationship between AI and IP (here). And WIPO conversation in July 2020 (here) showed different approaches to the inventorship issue. See for example a Chinese view from HE Juan (Senior Judge of the Intellectual Property Court of the Supreme People’s Court of the People’s Republic of China): “for AI- generated-inventions, as long as they meet the legal requirements, they are not excluded from patent protection […] There are no obstacles to recognizing AI as an inventor at the legal and practical levels. Even if the inventor is credited to be only a natural person, there is the possibility of creating a legal subject status for AI” (here). Yet, most western scholars firmly see AI as a mere tool.

In any case, Dr. Thaler is not desisting. He filed appeals in the EPO in March 2020 (here). More updates soon…

Francesco Banterle

England and Wales High Court (Patents Court), Judge Marcus Smith, decision of 21 September 2020, Stephen L Thaler v. the Comptroller-general of Patents, Designs and Trade Mark

“It’s not the gay coat that makes the gentleman”: The Court of Florence rules once again on promotional materials portraying the David by Michelangelo (all dressed up, this time) and misses a chance to “unveil” the meaning of cultural heritage reproduction

Affectionate readers of this blog will already be familiar with the Italian rules on the reproduction of cultural heritage as well as with two 2017 Court decisions that dealt with unauthorized reproductions of, respectively, the Teatro Massimo of Palermo and the David by Michelangelo (see here) (for an earlier dispute over a controversial picture of the David “bearing arms”, see here).

Among the many Italian public entities having the right to authorise the reproduction of their cultural heritage assets, those having rights on the David by Michelangelo in particular seem to be the most aware of their prerogatives, as in early 2019 the Court of Florence was called to rule on yet another case involving this Renaissance masterpiece (the full decision is available here).

The facts of the case are rather simple: Brioni, a prestigious Italian menswear couture brand, launched an advertising campaign (consisting of a video and some pictures) centred on a full-scale marble replica of the David by Michelangelo wearing a tailor made suit from Brioni’s couturiers.

The replica had been manufactured by an Italian sculpture workshop in 2002 and then used for a couple of other projects before being lent for free to Brioni for their campaign in 2018.

The Italian Ministry of Cultural Heritage and Activities started urgency proceedings before the Court of Florence against both Brioni and the workshop asking, inter alia, for an interim injunction against the use of the David’s image for profit purposes.

Upon commencement of the proceedings, the advertising campaign was immediately withdrawn, and the sculpture workshop undertook not to further use the replica for future events without the Ministry authorization.

The Court to Florence therefore rejected the petition for interim relief on grounds of lack of urgency. That said, in a meaningful obiter dictum, the Court briefly touched upon some of the substantive issues that were at stake.

According to the Court, among these issues were in particular (i) “the exact scope of the concept of “reproduction” [and] of its object pursuant to Articles 106-108 of the Code of Cultural Heritage”; and (ii) whether the contested use of the David constituted a “creative re-elaboration” pursuant to Art. 4 of the Italian Copyright Law – rather than a reproduction. The Court of Florence did not provide an answer to those questions; but the very fact that the Court felt the need to mention them, made it clear that the answer would have been far from obvious.

The first of these issues appears to be of capital importance and is arguably linked to the second one.

The scarce case-law that dealt with cases of reproduction of Italian cultural heritage seems to have taken it for granted that the notion of reproduction pursuant to Art. 107 of the Code of Cultural Heritage could be borrowed from copyright law.

This was in fact confirmed in 2013 by the Court of Cassation, which in a case involving the sale of replicas of the fossilized skull of a Neanderthal (the Altamura Man – see picture below), ruled that, in principle, “it is indeed possible to refer to the provision of copyright law that defines the concept of reproduction”, i.e. Art. 13 of the Italian Copyright Law according to which “the exclusive right of reproduction concerns the multiplication of copies of the work in all or in part, either direct or indirect, temporary or permanent, by any means or in any form, such as copying by hand, printing, lithography, engraving, photography, phonography, cinematography, and any other process of reproduction” (Italian Court of Cassation, decision no. 9757/2013).

Eventually, however, the Court of Cassation concluded that no reproduction had taken place in that case, because the replica had been created without reproducing the actual shape of the skull (which was for the most part embedded in a cave and therefore not even visible), but with “an hypothetical reconstruction, based on a series of scientific findings and reconstructive hypotheses, of what could be the entire cranial structure”. According to the Court of Cassation, this resulted in “a new work which, as such, is the subject of autonomous protection under copyright law”.

It seems possible to read the Court of Cassation decision as follows: where a given cultural heritage asset is not literally copied but independently recreated in the context of a new creative work, this does not constitute a reproduction pursuant to the Code of Cultural Heritage.

Indeed, it has been noted that “the copies obtained by a specific (moulded) impression of the original piece are reproductions, and the ones obtained by a free sculpting or shaping operation (creation) represent different actions. In the latter case, the work is certainly closer to an independent artistic action than to a copying act. Digital models share the same difference: any digital 3D model may be the result of the reproduction of an existing object (through laser scanners or the process of photogrammetry), or the result of a modelling (creation from scratch) operation (see here).

In this perspective, in the 2019 Court of Florence case, Brioni had defended itself by claiming that the advertising campaign did not reproduce the original David by Michelangelo, “but rather a different asset, created by a sculpture workshop, in combination with a tailor’s work”.

Plainly transposing copyright law notions into cultural heritage law could have spiralling consequences. Especially if one considers that the Code of Cultural Heritage also provides for criminal penalties against “anyone who, in order to profit from it, […] reproduces a work of painting, sculpture or graphics, or an object of antiquity or of historical or archaeological interest” (Art. 178).

Should Matt Groening be jailed for up to 4 years? (Matt Groening being the creator of the animated TV series “The Simpsons” where the following image comes from).

Probably not. In fact, in regard of this criminal provision, the Court of Cassation has been more categorical: “reproduction shall mean copying the work in such a way that the copy can be confused with the original” (Court of Cassation, decision no. 29/1996).

Mr. Groening can breathe a sigh of relief, this time (criminally speaking, at least).

Another related issue, which to our knowledge has not been expressly tackled by case-law yet, is whether the Code of Cultural Heritage provides for an exclusive negative right, allowing rightsholders to prevent any third party from reproducing its subject matter (again, just like copyright law) or merely for a right to a compensation in case a reproduction takes place (as maintained by POJAGHI, Beni culturali e diritto d’autore, Dir. aut., 1/2014, 153).

Policy considerations could suggest the latter. In the vast majority of cases, cultural heritage assets are part of the public domain (at least in a copyright perspective). Why leave it to the unquestionable discretion of various public entities to authorise their reproductions? Shouldn’t rightsholders at least prove some kind or reputational damage to stop the unauthorised use of a given reproduction?

It has also been argued that, the Code of Cultural Heritage being a text of public law, the only possible consequences in case of a violation of its provisions would be administrative sanctions – not injunctions or other remedies typical of intellectual property law (see here).

In the past, the Court of Florence seems to have – perhaps too hastily – borrowed from the copyright/IP regime of remedies. Specifically, it did not hesitate to issue a (pan-European) interim injunction against the unauthorised photographic reproduction of the David by Michelangelo in the promotional materials of a travel agency. This was done on the grounds that “the indiscriminate use of the image of cultural assets is liable to diminish their attractiveness” (which is particularly counterintuitive, considering that the travel agency was using the materials to promote guided visits to the actual David). Furthermore, it also issued additional – and rather afflicting – orders of withdrawal of all the promotional materials from the market, destruction of those materials, destruction of all instruments used to produce or market those materials, publication of the decision on several national newspapers and magazines, as well as online, and – for every single order – very high penalties in case of non-compliance (see the 2017 decision mentioned at the beginning of this post).

The Court of Milan, on the other hand, has proven to be more cautious. In a 2015 case involving the unauthorized photographic reproduction in e-books of a number of drawings from the Fondo Peterzano (which is part of the Italian cultural heritage), it ruled that “in the absence of any appreciable prejudice deriving from the publication of the reproductions, […] the request for an injunction from further commercialisation must be rejected” (see here).

All in all, the interpretation of the Italian rules on the reproduction of cultural heritage is not 100% clear yet, but the increasing awareness of the subject by public entities will most likely lead to other disputes in the near future, which could shed more light on this topic.

Emanuele Fava – Nicoletta Serao

Court of Florence, 2 January 2019, MIBAC vs. Brioni S.p.a., case Docket No. 15147/2018

USPTO: no room for artificial inventors

Not surprisingly, also the USPTO came to that conclusion: inventorship is limited to natural persons. Thus, this is in line with the EPO‘s and the UKIPO‘s recent decisions.

Similarly to the European cases, the decision issued on 22 April 2020 (here) came in response to two patent applications on inventions created by an AI system called “Dabus”, in the context of the Artificial Inventor Project. Dabus is also known as the Creativity machine, which was developed by Dr. Stephen Thaler, who is named as the applicant and assignee in the patent applications. The Artificial Inventor Project has filed patent applications via the Patent Cooperation Treaty in various countries including the US, UK, Germany, and China.

The applicant (Dr. Thaler) referred that the Creativity machine is programmed as a series of neural networks trained with general information to independently create. It was the machine, not a person, who recognized the novelty and salience of the inventions at stake.

The application was listing a single inventor (Dabus) and the family name “invention generated by artificial intelligence”.

The main argument of the USPTO is similar to that of the EPO:  US patent law refers to inventors as humans, individuals, or persons. The term “inventor” therefore means the individual who invented the subject matter of the invention. The patent statues preclude a broad interpretation where “inventor” could be construed to cover machines. This view was confirmed by the Federal Circuit that (albeit referring to inventorship in the context of corporations) explained that patent laws require the inventor to be a natural person (see University of Utah v. Max-Planck-Gesellschaft zur Forderung der Wiessenschaften e.V., 734 F.3d 1315 (Fed. Cir. 2013), here: “[t]o perform this mental act, inventors must be natural persons“).

Also, the Manual of Patent Examining Procedure explains that inventorship requires “conception”. And “conception” is defined as a mental act, that is the formation in the mind of the inventor of the idea of the invention. Reference to “mental” and “mind”, again, points to a natural person.

The Office has also explained that inventorship has long been a condition for patentability, as naming an incorrect inventor is a grounds for rejection.

Last, the Office has refused to enter into any policy considerations on the advantages of supporting allowing AI as inventor, as in any case “they do not overcome the plain language of the patent laws”.

Is the end of the story? As the UKIPO said, further debate is needed. It will be interesting to see what local patent offices in other countries will say, especially after a Chinese court held AI-written articles protected by copyright – see here – although a human element still appears necessary.

Francesco Banterle