Brazil: Artificial intelligence can be an inventor in patent application?
At A Glance
The Opinion INPI/PGF/AGU2 remarks the Brazilian understanding on the subject to date – as the BPTO must abide by such orientation in any other patent application, results from a patent application autonomously invented by an artificial intelligence, called "DABUS", specialized in brainstorming new discoveries without any human intervention. This patent, which lists the AI as inventor has been filed in 17 countries, resulting on an international debate on the topic.3
Following other worldwide jurisdictions, e.g UK and USA, for instance, the same patent application was filed and rejected and the Patent Trademark Office reinforced the rights of the human inventor. In other words, the BPTO’s opinion ensures that only natural persons can be credited with authorship of inventions, since only natural persons have a legal nature based on a personality right. Thus, the BPTO Attorney General's Office concluded that the inventor must necessarily be a natural person with civil capacity, as defined by the Brazilian Civil Code, based on the Brazilian Industrial Property Law (Law No. 9,279 of 1996), particularly Articles 6 and 4, which establish that the inventor has the right to be named and identified as such in relation to its patented invention.
The European Patent Office (EPO)4 understood similarly: the designation of an inventor is mandatory, primarily to ensure that the designated inventor is legitimate and can benefit from rights associated with the status of patent inventor – and such rights would only be exercisable if the inventor has personality, as a natural person, which AI does not possess (to date).
It should be noted that there is a significant international debate on the subject. As mentioned, the EPO3, the United Kingdom Intellectual Property Office (UKPTO)5, among other bodies from different countries, decided to reject the same application, with arguments similar to those raised by the BPTO. In counterpoint, the German Patent Court found a common ground, allowing "DABUS AI" to be included as a co-inventor, thus requiring the human inventor to be jointly named. The Australian Office concluded, in the first instance, that there is "no specific provision expressly excluding the possibility of AI being named as inventor" – however, the application was rejected in the second instance.6
The first patent office to accept the “DABUS” patent application was the South African Companies and Intellectual Property Commission (“CIPC”), based on two main arguments in favor of the possibility of conferring inventor status to AIs: it would be the most appropriate way to stimulate innovation and provide an adequate framework for technological development, which would need to be supported by sectoral regulation. It would thus be a legal delay to interpret the old laws in a static manner, not adapting them to new developments and challenges, so creating a regulatory gap.
An interesting fact is that countries that rejected such patent applications have similarities on their legal frameworks – for example, not having specific laws involving AI and indirectly classifying the inventor as an individual in their respective industrial property laws, despite not openly forbidding otherwise, which enables debate and supervening regulation to settle the issue. As stated in the Report, the dilemma poses a challenge to the current system of intellectual property rights protection, and there is a need for the development of regulation that disciplines AI-conceived inventions, as well as international treaties to standardize such premises, in order to enable the recognition of intellectual property rights that are the product of agents other than humans.
Although Bill 21/2020, called the Legal Landmark of AI, is already under discussion in the Brazilian parliament, establishing principles, rights and duties for the use of AI in Brazil, it does not include the matter of authorship of assets subject to intellectual property (in particular copyrights and patent-protectable inventions).7 In this sense, the debate on the positions of public officials is still ongoing. Nonetheless, despite the aforementioned decisions determining the offices' current standpoint on the topic, divergences on the subject and different lines of argument remain in all cases, particularly in light of the new regulatory and technological horizons that are to come.
1 Inteligência Artificial não pode ser indicada como inventora em pedido de patente. Disponível em: https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias%202022/inteligencia-artificial-nao-pode-ser-indicada-como-inventora-em-pedido-de-patente.
2 Parecer No. 00024/2022/CGPI/PFE- INPI/PGF/AGU. Disponível em: https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias%202022/inteligencia-artificial-nao-pode-ser-indicada-como-inventora-em-pedido-de-patente/ParecerCGPIPROCsobreInteligenciaartificial.pdf.
3 Dissertação. Disponível em: https://tede.ufam.edu.br/bitstream/tede/8760/2/Disserta%c3%a7%c3%a3o_Juliane Maia_PROFNIT.pdf
4 EPO publishes grounds for its decision to refuse two patent applications naming a machine as inventor. Disponível em: https://www.epo.org/news-events/news/2020/20200128.html.
5 Decision. Issue: Whether the requirements of section 7 and 13 concerning the naming of inventor and the right to apply for a patent have been satisfied in respect of GB1816909.4 and GB1818161.0. Disponível em : https://www.ipo.gov.uk/p-challenge-decision-results/o74119.pdf.
6 Nos tribunais: Um tribunal australiano considera que os sistemas de IA podem ser "inventores". Disponível em: https://www.wipo.int/wipo_magazine/pt/2021/03/article_0006.html.
7 Projeto de Lei n° 21, de 2020. Disponível em: https://www25.senado.leg.br/web/atividade/materias/-/materia/151547.
