Only a human being can be legally listed on a patent as an inventor, according to a Virginia federal judge who delivered the first US ruling in the worldwide debate on the patentability of artificial intelligence (AI) inventions.
Judge Leonie Brinkema at the US District Court for the Eastern District of Virginia handed down the decision on September 2, holding that US law requires that an “individual” take an oath that he or she is the inventor on a patent application and that the legal definition of an individual is a natural person—ie, a human being.
The ruling struck down the efforts of physicist Stephen Thaler who attempted to list the AI machine, DABUS, as the creator of two designs, a drink holder and a flashing light.
In April 2019, the US Patent and Trademark Office (USPTO) confirmed that an AI can’t be named as an inventor on a patent application. According to the USPTO, the patent statutes preclude the “broad interpretation” that an “inventor” could be construed to cover machines. It stated that granting patents to Thaler’s AI system would “contradict the plain reading of the [US] patent statutes that refer to persons and individuals”.
In August 2020, Thaler sued the USPTO in a challenge to the office’s rejection of patent applications for inventions created by DABUS.
In the suit, Thaler claimed the USPTO’s position was “anti-IP” and “anti-business”. He added that it put US businesses at an international disadvantage compared to businesses in jurisdictions that will grant patents on AI-generated inventions, and there was a danger that future patent applicants may inaccurately list a person as an inventor.
“There may come a time when AI reaches a level of sophistication such that it might satisfy accepted meaning of inventorship. But that time has not arrived.”
Judge Leonie Brinkema, US District Court for the Eastern District of Virginia
But Judge Brinkema wrote that Congress defined an individual as a natural person under the America Invents Act (2011) and that Thaler’s policy arguments could not override the overwhelming evidence that Congress intended this definition to apply to a human being.
She affirmed the 2019 USPTO decision but did, however, note that: “As technology evolves, there may come a time when AI reaches a level of sophistication such that it might satisfy accepted meaning of inventorship. But that time has not arrived, and if it does, it will be up to Congress to decide how, if at all, it wants to expand patent law.”
Background
DABUS was created as part of the Artificial Inventor Project (AIP), which is spearheaded by Ryan Abbott, professor of law and health sciences at the University of Surrey in the UK. According to the team behind DABUS, the ban on AI-inventors is out of step with a rapidly changing economy in which machines and AI are becoming more powerful, and more important in driving innovation.
In July, the Australian Federal Court became the first court to claim that AI can be an inventor. In a landmark decision, the court overturned an Australian Patent Office’s rejection of an application from Thaler.
The DABUS project has also succeeded in securing a patent in South Africa but unlike in the US, UK, or at the European Patent Office, South Africa’s patent office, the Companies and Intellectual Property Commission, does not examine patent applications in a substantive way. Instead, applications are only examined for compliance that the application meets the requirements to be granted a patent.
The DABUS team is also taking its mission to other countries including Canada, Japan, South Korea, the UK and Brazil.
Image: Shutterstock.com / Ryzhi
The EU General Court has dismissed Sony Interactive Entertainment’s challenge to an EU trademark application for ‘GT Racing’, which Sony argued could be confused with its racing game franchise Gran Turismo.
In a judgment handed down on September 1, Judge Maria Costeira ruled that the European Intellectual Property Office (EUIPO) did not err in its earlier decision to reject all of Sony’s opposition arguments.
The ‘GT Racing’ application was submitted by Wai Leong Wong for class 18 of the Nice Agreement, which covers “leather and imitations of leather and goods”.
The videogame giant argued that the application could be confused with its well-known racing game series, which debuted in 1997 and has seen six mainline instalments. The seventh game in the series is in development and expected to launch in 2022.
Sony claimed that Wong’s mark application could be confused with, or take advantage of, 14 different marks related to the Gran Turismo brand. However, it limited the majority of its arguments to its EU figurative mark of the Gran Turismo logo, which is a heavily stylised ‘GT’.
The figurative mark is registered for goods in classes 9, 16 and 28 of the Nice Agreement, which cover computer and videogames, printed matter and toys respectively.
In its appeal to the General Court, Sony also disputed the EUIPO Board of Appeal’s finding that the figurative mark was “so stylised” that it is unlikely that an uneducated consumer would interpret the logo as ‘GT’.
The General Court agreed with the EUIPO’s analysis, saying: “Contrary to what the applicant claims, the mere fact that the earlier EU figurative mark may have been developed on the basis of the abstract concept of the capital letters ‘G’ and ‘T’ is not in itself a sufficient ground for concluding that there is a visual similarity between the signs at issue.”
The court also denied that the marks were phonetically similar, citing the “illegibility” of the ‘GT’ figurative mark.
“The videogame giant argued that the application could be confused with its well-known racing game series.”
EU General Court
‘Dissimilar classes’
Sony also argued that the Board of Appeal erred in finding classes 16 and 18 “manifestly dissimilar”, arguing that all goods under the two classes could be used for merchandising purposes for the Gran Turismo brand. The General Court upheld the board’s findings that the goods at issue have neither the same nature nor the same purpose.
Case history
In August 2017, Wong filed an application to register ‘GT Racing’ as an EU mark covering class 18 of the Nice Agreement for “leather and imitations of leather and goods”.
Sony filed a notice of opposition of the mark in December 2017 based on a figurative mark of the Gran Turismo logo registered in 2002, an earlier word mark ‘Gran Turismo’ registered in 1999, and 12 other marks related to the videogame series.
The opposition division rejected Sony’s opposition in its entirety in June 2019, leading the tech giant to file a notice of appeal with the EUIPO.
The Fourth Board of Appeal dismissed the appeal in May 2020, finding that the marks were registered for entirely different goods and that visual, phonetic and conceptual similarities between the figurative mark were not possible.
This led Sony to appeal to the EU General Court in July 2020.
Image: Shutterstock.com / rafapress
A consortium of some of the world's largest media companies, including Disney, Amazon, Netflix and Warner Bros, has obtained a preliminary injunction against “mass infringer” Jason Tusa, the alleged operator of several pirate TV subscription services.
A total of 13 media companies sued Tusa at the US District Court for the Central District of California in July, seeking an injunction enjoining Tusa from hosting infringing works on his illegal subscription service Altered Carbon TV.
The companies also requested an injunction preventing the Altered Carbon-related domains from being modified, sold or transferred.
On August 16, the California court ordered both injunction requests in a minute order first reported by TorrentFreak.
The preliminary injunction targets several domains operated by Tusa, including alteredcarbon.online, 2pmtoforever.com, catchingbutterflies.host, stealingkisses.me, dum.world, and twoavocados.us.
The domain registers for each website are also prohibited from allowing the domains to be modified, sold, transferred or deleted. Public access to the websites will be prevented, and all evidence used to identify users of the websites will be preserved.
“Area 51 received three million visits between June 2019 and 2020, making it the ‘largest standalone’ internet protocol television service at the time.”
Prior litigation
Tusa had agreed to stop hosting and presenting copyrighted works following a suit that shut down his previous pirate TV subscription sites Singularity Media and Area 51.
According to a complaint filed on July 6, Area 51 received three million visits between June 2019 and 2020, making it the “largest standalone” internet protocol television service at the time.
After the discovery of Area 51, a cease and desist notice was issued against Tusa, ordering him to halt infringing activities, which he had allegedly signed without court intervention.
A week after the matter was settled, the media companies discovered Tusa had launched Digital UniCorn Media. Another letter was sent to Tusa regarding the infringement and breach of the settlement agreement, but Tusa initially denied any involvement.
Altered Carbon was then discovered by the plaintiffs on February 26, 2021.
Image: Shutterstock.com / Antonio Guillem
A court in Shanghai has ruled that an outfit that repackaged Ferrero Rocher chocolates into unauthorised products that included a reprint of the Ferrero logo, infringed the Italian chocolate maker’s marks.
The defendant, Liu Mouyang, ran an operation selling repackaged Ferrero Rocher chocolates in smaller boxes at a higher mark-up than the original products.
The court heard how Liu bought the chocolates in bulk at a lower unit price and then repackaged them into custom-made smaller packages that featured the ‘Ferrero’ branding.
The outfit illegally manufactured the labels, base cards, plastic boxes and the rest of the packaging materials. Liu pleaded guilty to the infringement and voluntarily paid an unknown compensation to the rights owners. The court sentenced him to three years in prison, issued a five-year suspension sentence, and fined him 300,000 yuan ($46,000).
Shanghai’s Third Intermediate People’s Court posted about the ruling on the Chinese micro-blogging site Weibo on August 19, 2021.
“Liu bought the chocolates in bulk at a lower unit price and then repackaged them into custom-made smaller packages.”
‘Damages goodwill’
According to the court’s post, police seized more than 490,000 Ferrero Rocher counterfeits between July and September 2020, featuring more than 800,000 ‘Ferrero’ trademarks—leading to Liu’s arrest and trial.
The court said that it suspected that more than 5.65 million infringing labels were manufactured in the operation, with an estimated price of 1.7 million Yuan.
“The way products seek illegal benefits not only undermines my country’s trademark printing management regulations but also damages the goodwill of the right holders and the rights and interests of consumers,” stated the court.
“In addition, the defendant did not have the qualification for food sub-packaging, and could not guarantee that the hygienic environmental conditions of the sub-packing process and the health of the sub-packing personnel met the sub-packing standards.
“There was a food safety risk, which brought safety hazards to the health of consumers,” it added.
Image: Shutterstock.com / Pinkcandy
