Siau Kee and Marcus Yau delve into the issues concerning the inventorship and authorship of IP conceived by artificial intelligence.

Professor at the University of Oxford, Nick Bostrom once said that artificial intelligence (“AI”) would be the last invention humans will ever need to make. Take for example the AI developed by British research company DeepMind Technologies - AlphaFold2 - an AI designed to determine a protein’s 3D shape or folding sequence from its amino-acid sequence for scientific research and went on to produce protein folding predictions that would take scientists years to produce. In light of AI creations which require minimal input from its human counterpart, intellectual property laws would need to evolve to address the various issues brought about by the advent of AI, particularly, who should be the inventor (in relation to patents) or author (in relation to copyright) of the IP behind such creations?

Patents

Position in other jurisdictions

Stephen L. Thaler, the creator of the AI, ‘DABUS’ (being the acronym for Device for the Autonomous Bootstrapping of Unified Sentience) claimed that DABUS had independently invented an innovative food container and devices and methods for attracting enhanced attention. Thaler had attempted to patent the inventions indicating DABUS as the inventor. However, Thaler’s applications were rejected by, among others, the United States Patent and Trademark Office (“USPTO”), the European Patent Office (“EPO”) and the Australian Patent Office (“APO”) on the basis that the AI is not a natural person within the meaning of the respective laws and therefore cannot be registered as the inventor of a patent. While the same invention was accepted by the South African IP Office, it is worth noting that the patent system in South Africa is a depository system whereby substantive examination is not conducted. It therefore remains to be seen whether the patent will be challenged and invalidated there.

Position in Malaysia

The issue has yet to be tested in Malaysia in the context of the Patents Act 1983 (“PA 1983”). That said, the same concern on the requirement for the inventor to be a “natural person” will likely come into question given that the PA 1983 defines an “invention” as “an idea of an inventor which permits in practice the solution to a specific problem in the field of technology that may relate to a product or process”. However, it does not have a definition for “inventor”. The right to apply for a patent as stated in Section 18 of the PA 1983 provides that any person may make an application for a patent either alone or jointly with another (person) and that subject to any contrary provision of the PA 1983, the rights to the patent shall belong to the inventor. The Patents Regulations 1986 (“PR 1986”) which supplement the legislative function of the PA 1983, made numerous references to the words “he” and “him” to address the information to be furnished by the inventor. For example, Regulation 6 of the PR 1986 provides that if an inventor does not wish to be named in a patent, “he” may provide the Intellectual Property Corporation of Malaysia (“MyIPO”) with a written declaration signed by “him” indicating such decision. Reading such provisions in the PA 1983 and PR 1986 together, it appears that the existing patent laws in Malaysia impliedly require the inventor to be a natural person. While proponents for AI inventors would argue that Regulation 9 of the PR 1986 - which provides that the nationality of applicants which are not a natural person shall be the state it is constituted – seems to suggest that there is room for AI inventors to be legally recognised as an inventor within the PA 1983, it must be pointed out that the application of Regulation 9 is only confined to corporations or establishments and not AI inventors.

Copyright

Position in other jurisdictions

On copyright, AIs potentially play the role of a tool in the creative process, like how the Google Pixel smartphones’ image processing or Huawei smartphones’ beauty mode edits or touches up a photo after it is taken. The authorship of such photo would usually be attributed to the person taking the photo. However, this assumption is now placed into question with the involvement of AI. Notably, Thaler has also tested the issue of authorship in the US by indicating an AI as the author of a two-dimensional artwork titled ‘A Recent Entrance into Paradise’ which was autonomously created by the AI but was denied copyright registration since the work was not created by a human being, a decision later re-affirmed by the Copyright Review Board of the US Copyright Office in early 2022. Thaler has since sued the US Copyright Office in a bid to overturn its decision.

Position in Malaysia

While there has been no known instance of the law being tested for works produced by AI, we need not look too far to see that the Copyrights Act 1987 (“CA 1987”) also houses similar, exclusionary provisions which may disallow AIs from being recognised as the author of copyrighted works and disqualify such works from copyright protection. Section 26 of the CA 1987 provides that the first ownership of a copyright shall generally vest in the author, barring any other situations such as (among others) where the work was commissioned by a third party or the author is the employee. Section 3 of the CA 1987 defines an “author” in relation to the type of work involved. For literary, musical, or artistic works, the terms “writer”, “composer” and “artist” are respectively used, whereas in relation to photographs, films, sound recordings, or broadcasts, the author generally refers to the “person” who made the arrangements for the creation of such works. It should be noted that the Malaysian courts had on several occasions decided that a legal entity can be the author for sound recordings and broadcasts. Particularly, the court has in Rock Records (M) Sdn Bhd v Audio One Entertainment Sdn Bhd [2005] 3 MLJ 552 held that the author of a sound recording was a sound recording company which made arrangements for the recording of the songs referred to in the works. Further, in MediaCorp News Pte Ltd. & Ors v MediaBanc (Johor Bharu) Sdn Bhd & Ors [2010] 6 MLJ 657, it was held that the author of a broadcast could either be the person or corporate entity transmitting the program that was responsible for the selection of the contents of the program. That said, there are indications that AI may not fit into the definition of “author” under Malaysian copyright laws. For literary, musical, or artistic works, it is rather certain that the existing legislation only provides for an author who is a natural person, given the way “author” is defined for these types of works. Further, the computation of the protection period for copyright which is based on the life of the author has little to no room to address the “lifeless” state of AIs. Works created by AIs are also unlikely to qualify for copyright protection in Malaysia in view of Section 10 of the CA 1987 which requires the author of the work to be, at the time the work is made, a qualified person. The term “qualified person” in the CA 1987 (aside from explicitly stating the word “person”) is defined to mean either an individual who is a Malaysian citizen or a body corporate established in Malaysia. Thus, AIs clearly would not fall within the definition of “qualified person” and will accordingly fail to qualify for copyright protection in Malaysia.

Development and Takeaways

Authorities in foreign jurisdictions such as the UK Government has since considered if changes are required to the local intellectual property protection framework regarding the interplay between intellectual property rights and AI. On 28 June 2022, the UK Government has published its consultation outcome on, among others, how AI should be dealt with in the patent and copyright regimes. Taking into account the current state of AI, the UK Government has determined that it has no present plans to introduce changes to the UK patent laws concerning the AI-devised inventions, as well as to the copyright laws relating to computer-generated works without a human author. The UK Government has however indicated that it will keep these areas of law under review and will take appropriate action when intervention is necessary. As the world has yet to discover the actual limits of AI, it remains to be seen where AI stands in terms of the eyes of the law. It is currently far from clear whether Malaysian laws should be reformed with provisions to address AI-devised inventions and works, and whether, for example, by conferring AI with legal personality, it will address the issues of IP inventorship and authorship correctly. Till then, it appears that the current landscape of IP laws will generally require a natural person to be the inventor or author in place of AI in relation to inventions and copyrighted works.

Siau Kee is a Senior Associate at Wong Jin Nee & Teo. Her practice predominantly focuses on IP monetisation and commercialisation including franchising, and is a key contact for patent prosecution matters.

Marcus is an Associate at Wong Jin Nee & Teo. His practice predominantly focuses on brand protection and enforcement, licensing and franchising, as well as advertising compliance work.