Artificial Intelligence and Intellectual Property Law: From Diagnosis To Action

Max Planck Institute for Innovation and Competition Research Paper No.
22-08
Peter Georg Picht, Valerie Brunner, Rena Schmid
Artificial Intelligence and Intellectual Property Law:

From Diagnosis to Action
Max Planck Institute for Innovation and Competition Research Paper Series
Electronic copy available at: https://ssrn.com/abstract=4122985

Picht/Brunner/Schmid: Artificial Intelligence and Intellectual Property Law 1
Artificial Intelligence and Intellectual Property Law:

From Diagnosis to Action
(Working Paper)i
Peter Georg Pichtii/Valerie Brunneriii/Rena Schmidiv
Abstract English: The use of “artificial intelligence” systems becomes

ever more widespread and far-reaching. Technological and economic
concepts for an AI-based future are about to be implemented. It is,
hence, time for the intellectual property system to develop answers to
the challenges brought about by AI. Against this background, Zurich
University’s Center for Intellectual Property and Competition Law
(CIPCO) has initiated a joint research project on AI/IP with the Swiss
Intellectual Property Institute (IPI). A first stage of this project has
evaluated the state of the legal and economic discourse. These insights
form the basis for policy recommendations on how the intellectual
property system ought to be adapted to AI-related developments. The
present paper describes – as draft work in progress – the project setup
and summarizes its results gained so far. In doing so, it addresses key
AI/IP issues, including business models of AI innovation leaders,
inventorship/creatorship of AI systems de lege lata and de lege ferenda,
the DABUS litigation, the discussion on whether new types of IP rights
are necessary to protect AI inventions, the allocation of entitlements
and liability regarding such innovations, AI-related revisions in the
guidelines of important patent and trademark offices, the use such
offices make of AI tools, the need for new protection carve-outs (e.g. to
foster text and data mining), as well as AI’s potential raising the bar-
effect.
Abstract Deutsch: Der Einsatz von Systemen der „künstlichen

Intelligenz“ wird immer verbreiteter und weitreichender. Viele
technische und ökonomische Zukunftsszenarien stehen an der Schwelle
zur Realisierung. Damit wird es auch für das Immaterialgüterrecht
dringender, dort Antworten zu entwickeln, wo es sich durch KI
herausgefordert sieht. Das Center for Intellectual Property and
Competition Law (CIPCO) der Universität Zürich hat daher ein KI/IP-
i
The authors declare that they have neither a conflict of interests nor received funding
regarding this paper.
ii
Prof. Dr., LL.M. (Yale); Chair for Economic Law, University of Zurich; Director
Center for Intellectual Property and Competition Law (CIPCO), University of Zurich;
Affiliated Research Fellow, Max Planck Institute for Innovation and Competition.
iii
Academic assistant at the Chair for Economic Law (Prof. Picht), University of
Zurich.
iv
M Sc Ec; Economic Intern in the Institute of Intellectual Property of Switzerland.
Max Planck Institute for Innovation and Competition Research Paper No. 22-08

Kooperationsprojekt mit dem Schweizerischen Institut für Geistiges
Eigentum (IGE) aufgenommen. Eine erste Projektphase hat den Stand
des ökonomischen und rechtlichen Diskurses ermittelt und bildet damit
die Grundlage für Empfehlungen zur künftigen Ausgestaltung des
Immaterialgüterrechts in diesem Bereich. Der vorliegende Beitrag –
bei dem es sich noch um einen weiterzuentwickelnden Entwurf handelt
– legt hierüber Rechenschaft ab. Er beleuchtet nicht nur die
Projektausgestaltung, sondern auch die gegenwärtigen KI/IP-
Zentralthemen, etwa die Geschäftsmodelle von KI-Innovationsführern,
Erfinder- bzw. Urheberschaft von KI-Systemen de lege lata und de lege
ferenda, die Rechtsprechung zu DABUS, die Diskussion um die
Notwendigkeit neuer Schutzrechte für KI-Innovationen, die Allokation
von Rechtspositionen und Haftungsverantwortung an solchen
Innovationen jenseits der Erfinder-/Urheberfrage, die KI-bezogenen
Neuerungen in den Leitlinien wichtiger Patent- und Markenämter
sowie den Einsatz von KI-Instrumenten durch diese Ämter, neue
Schutzschranken zur Förderung von KI und KI als Schutzhürden
erhöhender Faktor.
Keywords: Artificial Intelligence, Intellectual Property Law, AI, KI,

DABUS, machine learning, deep learning, works made for hire,
America Invents Act, text and data mining, neuronal networks, patent,
copyright.
I. Introduction
The interaction between “artificial intelligence” (AI) and intellectual

property (IP) law has already produced an academic debate that is
intense, though focused rather selectively on some of the many
important aspects of this field. As of late, it seems that we are entering
a phase in which the AI/IP intersection gains an increasing practical
relevance. High company investments generate AI-related, IP-protected
(or potentially IP-protectable) output at a large scale and companies
have started competing vigorously in this field. In various jurisdictions,
courts or other decision-making bodies adjudicate the first AI/IP-related
cases. National and supra-national IP Offices, such as the World
Intellectual Property Organization (WIPO) or the European Patent
Office (EPO), are holding consultations to gauge stakeholder views on
the matter and determine what their AI/IP policies may be, also with a
view to the competition between jurisdictions and national economies1
1
Cf. on this aspect, for instance, European Parliament resolution of 20 October 2020
on intellectual property rights for the development of artificial intelligence
technologies, 2020/2015(INI), Sec. E.

for becoming an attractive host to AI-related business and research
activity.
Against this background, Zurich University’s Center for Intellectual

Property and Competition Law (CIPCO) is conducting, together with
the Swiss Intellectual Property Institute (IPI),2 a research and policy
project (“AI/IP Research Project”) that explores the future of
intellectual property law in an AI context. This paper, which is still a
draft work in progress, intends to briefly describe the AI/IP Research
Project and to reflect the insights the Project has, thus far, gained on the
state of discourse and developments in the area.
II. The AI/IP Research Project
Initiated in 2021, the AI/IP Research Project aims at (i) gaining an

overview of the current state of affairs in AI/IP, (ii) assess issues crucial
at the present stage by way of a multi-component methodology, and (iii)
proceed from these results to policy recommendations for how
European jurisdictions, including Switzerland, should position
themselves in international collaboration, as well as in national law-
making regarding AI/IP.
Applying a suitable methodology presents one of the Project’s

challenges as it cannot satisfactorily tackle its topic by a narrow, black
letter law-only interpretation of existing legal rules. It therefore chooses
a multi-component approach that has included, so far, mainly a
comparative analysis of the AI/IP law situation – across the range of
major IP rights3 – in various jurisdictions, the gathering of first-hand
empirical evidence through stakeholder input (e.g. industry
representatives, specialized counsel, members of state and supra-state
IP administrations), and an interdisciplinary exchange with innovation
economists and computer scientists specializing in AI. At its next stage,
the Project will, inter alia, intensify the intradisciplinary legal discourse
with scholars working on AI from other angles than core IP law, e.g.
data law, contract law (including smart contracts based on blockchain-
2
Both institution and Office anonymized for the purposes of this submission.
3
So far, the AI/IP discussion shows a certain, understandable focus on patent law.
However, a conceptual, holistic policy project on AI/IP, such as the Project described
here, must not overlook the important issues and developments in other areas of IP
law, especially copyright and trade secrets law.

type digital ledgers),4 general technology and liability law, as well as
constitutional law5.
As the backbone of its activities from Q2/2021 until Q1/2022, the

Project conducted a series of workshops – held online, due to the Covid
19 pandemic – in which legal, economic and technical experts, as well
as company representatives and other stakeholders, presented and
discussed key AI/IP aspects:
 The workshop in June 2021 focused on the status quo of the AI/IP
discussion and possible ways forward. Prof Ryan Abbott
presented the challenges but also the opportunities AI presents in
the realm of technical inventions. Beat Weibel provided an
insight into the use of AI systems by large industry players (such
as e.g. Siemens) and the continuing importance of IPRs in a
digital ecosystem. Peter R. Thomsen focused specifically on
challenges and trends in the life sciences sector, including
Novartis’ AI-related projects. Kate Gaudry explained the
particularities of patent applications in the field of artificial
intelligence. Prof Daryl Lim took, on the one hand, a comparative
look at Asian AI/IP rules and approaches. On the other hand, he
highlighted the importance of data (law) aspects for innovative
AI activity.
 Dr Hansueli Stamm gave an overview on the current situation in

Switzerland. Prof Dr Florent Thouvenin discussed current EU
approaches, especially the draft EU AI Act. Dr Begonia Gonzalez
Otero advocated, as a possible future course of action,
comprehensive regulation encompassing but not limited to the
IPR system. 6
 The September 2021 workshop put the main emphasis on the

technological and economic aspects of AI systems. Dr.
Alessandro Curioni presented technological trends in AI-related
patenting, including IBM’s focal areas of AI (patenting) activity.
Alicia Daly contributed WIPO’s research results on AI-related
technology and protection trends, as well as an overview of WIPO
projects in the field. Michael Schröder shared insights from
4
For instance, licensing transactions driven by AI and implanted through blockchain-
based smart contracts are a promising object for joint research, including with a view
to mass copyright infringements on the internet, partly resulting from the difficulty of
achieving freedom to lawfully operate at reasonable transaction cost.
5
Hitherto, IP law has been deliberately hesitant to base protectability decisions on
distinctions between “good” and “bad” technology. Nonetheless, research and
reflection about the appropriate framework for a phenomenon as far-reaching as AI
should include ethical and fundamental freedom considerations, for instance when it
comes to the potential design of new sui generis IP rights or the stipulation of
compulsory license entitlements.
6
Workshop 1, https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/rahmenbedingun
gen-status-quo-ausblick.html.

ERNI’s specialized consultancy practice on the range of business
models driven by AI innovations. Prof Naomi Häfner and Prof
Martin Bader reflected on the economic considerations that
should guide the AI/IP-specific search for an appropriate balance
between IPR protection and leeway for open innovation activity.7
 The January 2022 workshop continued the technology and

economics discourse, while also looking at legal design and the
relevance of AI systems in the work of Intellectual Property
Offices (IPOs) around the world. Prof Felix Addor presented the
approach of the Swiss IPI to AI/IP, especially in an international
context. Sabrina Konrad complemented this overview with a
focus on AI and Swiss copyright law. Ulrike Till explained how
WIPO employs AI in its work and where it sees a broader impact
of such technologies on society. Representing the EPO, Heli
Pihlajamaa focused on the Office’s guidelines for AI-related
patent applications. Trina Ha concentrated more on AI-related
copyright issues in Singapore law, as well as AI applications used
by the Intellectual Property Office of Singapore. Pierre Olivier
contributed the UK perspective, in particular the pertinent
consultation launched by the UKIPO, the current use of AI tools
in the Office’s work, and specific AI rules in UK copyright law.
Prof Abraham Bernstein provided the perspective of a computer
scientist on the future of AI technologies. Prof Gaetan de
Rassenfosse focused on the future role and shape of patenting
incentives from an economic perspective.8
The Project’s next step will be a conference, to be held in Zurich in June

2022. At this conference, the workshop speakers and additional experts
will discuss not only AI/IP matters in general but in particular also draft
policy recommendations prepared by a group of authors (Zurich AI/IP
Group) consisting of CIPCO members and external collaborators. A
subsequent draft of these Policy Recommendations will take the
conference results into account and be submitted to the IPI in fall 2022.
At this point, CIPCO and the IPI are going to also determine ways
forward for the AI/IP Project.
III. Phenomenology: “AI”, Innovation, and the Marketplace
Especially given a certain element of hype and buzz-wording to the

AI/IP discourse, it is important to gain a clear perception of the
phenomena intellectual property law may apply to in an AI context.
Complicating this task, the term “artificial intelligence” represents a
7
Workshop 2, https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/technische-oekon
omische-aspekte.html.
8
Workshop 3, https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/politische-rechtli
che-Gestaltung.html.

concept that is not consensually defined and on the move in the sense
that the “intelligence” threshold shifts with improving technical
performance.
1. Characteristics of “AI”
Nonetheless, certain features are widely regarded as constitutive for AI

systems. The OECD, for instance, defines an AI system as a machine-
based system that is capable of influencing the environment by making
recommendations, predictions or decisions for a given set of objectives.
It uses machine and/or human-based inputs/data to i) perceive
environments, ii) abstract these perceptions into models, and iii)
interpret the models to formulate options for outcomes. AI systems are
designed to operate with varying levels of autonomy. 9 US legislature
perceives AI to encompass, in particular, systems that perform tasks
under varying and unpredictable circumstances without significant
human oversight, or that can learn from experience and improve
performance when exposed to data sets; artificial systems developed in
computer software, physical hardware, or another context that solve
tasks requiring human-like perception, cognition, planning, learning,
communication, or physical action; systems designed to think or act like
a human, including cognitive architectures and neural networks; a set
of techniques, including machine learning, that is designed to
approximate a cognitive task; and artificial systems designed to act
rationally, including an intelligent software agent or embodied robot
that achieves goals using perception, planning, reasoning, learning,
communicating, decision-making, and acting. 10 Systems displaying
such features still differ in many respects, such as in their recognition
structure (e.g. general machine learning versus deep learning with or
without neuronal network),11 the transparency of their operations (e.g.
predetermined operation steps versus AI black boxes; neuro-symbolic
AI12), or the tasks they can perform (special AI versus general purpose13
AI).
9
OECD High-Level General Definition of AI-Systems, https://oecd.ai/en/wonk/a-
first-look-at-the-oecds-framework-for-the-classification-of-ai-systems-for-policyma
kers.
10
Section 238(g) FY2019 National Defense Authorization Act, H.R. 5515.
11
Roughly speaking, deep learning is a particularly sophisticated form of machine
learning and learning by way of neural networks is a particularly sophisticated
subfield of deep learning. From simple machine learning to deep learning, algorithms
become ever more proficient in determining themselves, without much human
intervention, patterns and distinguishing features from raw (as opposed to labeled)
datasets.
12
Neuro-symbolic AI is a subtype of deep learning AI which aims at improving
communications between humans and the AI system; see on the wider context e.g.
FRÜH, 10.
13
In the view of some experts, only general purpose systems should even be
considered as “real” AI.

2. AI System and Output Innovation
Intellectual property law comes into play with regard to AI system-

related intangible assets. In particular, improvements to the system
itself (“AI system innovation”) – more sophisticated algorithmic
software, increased computing power, etc. – or its innovative outputs
(“output innovation”) are candidates for protection by intellectual
property rights (IPRs). Distinguishing between these two types, or
levels, of innovative activity is important not least because, as yet, the
issue of AI creatorship (cf. below 0) relates mainly to output innovation,
whereas concerns over an exclusive proprietarization of gatekeeper
technology arise mainly from (potential) IPRs on AI system innovation.
On the other hand, the desirability of AI system innovation may also
mandate broader access (e.g. via protection carve-outs) to data or other
intangible resources necessary for such innovation.
From the perspective of IPR typology, AI system innovation

mainly qualifies for certain forms of copyright (e.g. software), patent
(e.g. computer-implemented inventions) or trade secret (e.g. efficient
modes of operation) protection,14 whereas output innovation engages a
broader range of IPRs, including for instance trademarks (e.g. AI-
generated brand names or logos), designs (e.g. product shapes), or
copyrights on works of art (e.g. poems or music). (Digital) Data are an
intangible asset of essential importance to AI systems, both on the input
side – as training data or object of analysis – and on the output side as
the information the system has produced on e.g. patterns in the object
data. At the same time, the law finds it notoriously difficult to come to
grips with data. Intellectual property law puzzles over the concept of
data ownership, data protection law over how to reconcile the protection
of personal information with a beneficial flow of valuable information,
contract law over appropriate transaction rules for such an evasive
object, and competition law over how to control data-based market
power. Appropriate treatment of the data dimension forms, therefore, a
key task and challenge for an appropriate AI/IP legal framework.
Accordingly, Lim suggests that the AI/IP discourse pays much more
attention to issues like data protection, data regulation, and the asset
value of data.15
14
Further forms of IP protection are conceivable as well, though, e.g. semi-conductor
protection rights.
15
Workshop 1, https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/rahmenbedingun
gen-status-quo-ausblick.html.

3. Business Strategies
a) General Trends
Early as such a diagnosis may be, some evidence suggests that AI has
– at least in certain sectors16 – a structural impact on how companies
operate in the marketplace. In sync with other motors of the digital
transformation of our economies, it seems to foster division of labour,
including co-innovation in value-generating networks of companies.17
Variable costs for certain system outputs drop sharply, whereas
investments necessary to build and maintain competitive AI systems
can be very high. While the prognosis of a surge in data
generation/collection, processing, refinement and transactions requires
not much clairvoyance, it remains to be verified whether – although it
seems likely that18 – this engenders a parallel growth in innovation
dynamics. Some, though not all, 19 firms seem to increasingly resort to
trade secret protection, instead of applying for patents or other
registered IPRs, a development detrimental to the traditional IP system
rationale of IPR protection in exchange for invention disclosure to the
public, but also to more general notions of AI explainability and
transparency.
b) Case Studies: Siemens, Novartis, IBM
For the manufacturing and infrastructure business of Siemens, AI is

omnipresent and, together with digitalization more generally, the driver
for a fundamental transformation of the sector.20 While AI systems have
the potential to gain their users a tremendous competitive advantage, it
is difficult for a company to master all involved technologies by itself.
On a market structure level, this fosters a combined trend of
interconnection and differentiation. Companies focus their own
activities on their areas of strength, while increasingly collaborating in
digital ecosystems to cover other business requirements.21 This also
affects the role of IPRs in important ways, accentuating their ability to
16
Sectors for which AI already plays a key role include mobility and
telecommunications, but also life and medical sciences including therapeutics.
17
Baquero, Networks of Collaborative Contracts for Innovation, 2020, p. 235 seq.
18
Cf. DESANTES REAL, 39 seq.
19
Cf., on the continuing relevance of patent protection, Beat Weibel und Peter R.
Thomsen, Workshop 1, https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/rahmen
bedingungen-status-quo-ausblick.html.; Geatan de Rassenfosse, Workshop 3,
https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/politische-rechtliche-Gestaltung.
html.
20
On this and the following, see in particular Beat Weibel, Workshop 1,
https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/rahmenbedingungen-status-quo-
ausblick.html.
21
This trend has also led Siemens to shift from a traditional conglomerate structure to
four independently managed business divisions, namely Siemens AG, Siemens
Healthineers, Siemens Energy and Siemens Mobility.

document innovative contributions to a multi-company digital
ecosystem instead of their role as the basis of (the enforcement of)
inflexible, exclusionary monopoly rights. For protecting its innovations
in key business areas, such as IoT or simulation technologies, Siemens
considers patents to be indispensable, even though trade secrets and
copyrights can convey additional benefits. Certain elements of the IP
system should be adjusted to an AI context, though, including the
protectability of simulations, the capacity of legal persons to acquire
initial patent ownership, or the possibility to easily register software
copyrights.
Even though Novartis and other life sciences companies are not
forerunners in AI development, they see great potential for the use of
such technology at all stages of drug/treatment research and
commercialization.22 AI applications can be helpful in early and late
research, manufacturing, marketing, and post-market surveillance, with
resource efficiencies in trials being presently the most important area.
This ranges from the trial design, its start-up phase including resource
distribution, trial conduct and close out. Through, for instance,
advanced data analytics, enhanced biosensors, and connected devices,
AI improves the chances of success in clinical trials. Furthermore, AI-
empowered wearables can tap a high amount of data, which can be used
for further treatment development. The Novartis data42 initiative is an
example of a huge, high-quality data pool. Furthermore, there are
already digital therapeutics which are often used in combination with
traditional drugs. Novartis collaborates with Microsoft to strengthen its
AI capabilities around AI systems, as the IT expertise of the high-tech
industry seems indispensable. Novartis perceives the challenges of the
digital age and AI for traditional life sciences business model to be
immense, especially regarding the IP perspective. An unavailability of
patents for AI-generated inventions would call such business models
into question. Although trade secrets may be an alternative in some
industries, the pharmaceutical sector cannot sufficiently rely on this
protection, for instance because it has for comply with specific
transparency obligations.
In addition to a few further areas, IBM currently focuses its

fundamental research on AI, including in the context of Quantum
Computing.23 AI changes IBM’s innovation processes as it accelerates
discoveries. IBM research tries to address current AI limitations, such
as the tremendous amount of data and investments required by AI
systems and their limitation to the single task domain. Scalability
limitations result from the fact that human resources are needed to
22
On this and the following, see in particular Peter R. Thomsen, Workshop 1,
https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/rahmenbedingungen-status-quo-
ausblick.html; https://www.novartis.com/about/strategy/data-and-digital/artificial-
intelligence.
23
On this and the following, see in particular Alessandro Curioni, Workshop 2,
https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/technische-oekonomische-
aspekte.html.

enable AI systems to generate business-relevant output. With a view to
the computing resources needed for such systems, sustainability is an
issue. To find solutions, IBM research focuses on four core themes.
These are, first, neuro-symbolic AI to advance core AI by including
data-based deep learning; second, the design of secure, explainable and
trustable AI, in combination with principles for appropriate AI-related
conduct that IBM is stipulating and discussing with stakeholders; third,
AI model engineering; and, fourth, improvements to AI computing
hardware, with a view to improving sustainability. The direct
interaction between human and AI processes in the field of
neurotechnology could become a further focus.
IV. AI Creatorship – Protectability
Can IPR protection extend to intangible assets created not by a human

but by an AI system? This question, arguably the one discussed most
intensely at present in the entire field of AI/IP, forks at a closer look
into multiple prongs. Depending on how the output presents itself, it
engages copyright, patent, trademark, trade secrets, or other IP laws.
Much hinges on how autonomously from human intervention the AI
system really operates. Notions of whether the IP system should, from
a policy perspective, protect AI creations24 blend into a de lege lata-
analysis of whether the interpretation of current IP rules allows for such
an approach.
1. Patent Law – DABUS and beyond
a. DABUS
Patent law currently fights its most conspicuous battle over protection
for AI-created inventions on the field of the DABUS case. DABUS25 is
an AI system created by Stephen Thaler and trained to mimic aspects
of human brain function. According to corresponding patent
applications, DABUS generated two inventions, a plastic food
container based on fractal geometry and a flashing light (or “neural
flame”) to alert emergencies. Patent Offices in the US, Australia, UK
and Germany, as well as the European Patent Office (EPO) denied
protection for these inventions, since and because DABUS was
designated as the inventor and prospective patent owner. Thaler
subsequently filed lawsuits26 in various countries against the decisions
24
The term creation/creator(-ship) is used here in a broad sense, encompassing
inventions, works in the sense of copyrights, and other intangible assets potentially
protectable by IPRs.
25
“Device for the Autonomous Bootstrapping of Unified Sentience”.
26
For an overview, see https://artificialinventor.com/patent-applications/.

of the patent offices. They were, so far, of mixed success: On 21
December 2021, the EPO Legal Board of Appeal upheld the decision
taken by its first instance. The EPO stated27 that only a human inventor
could be an inventor within the meaning of the EPC.28 Designating a
machine as inventor did not comply with the requirements set out in
Article 81 and Rule 19(1) EPC.29 Furthermore, the Board of Appeal
concluded that a machine could not transfer any rights to the applicant
since AI has no legal capacity. Human ownership by way of succession
in title to an AI (Articles 60(1), 81 EPC) must fail, therefore, as well.
Additionally, the EPO Receiving Section referred to the substantive
patentability requirements and the right of the public to know the
inventor.30 Commentaries on the EPO case law mainly agree that the
current EPC framework is keyed to human inventorship,31 not least
because it is already well established that the EPC does not accept legal
persons as inventors.32 However, they also point out, inter alia, that a
historical interpretation, including references to the Travaux
Préparatoires, is of limited value since AI inventorship was not a topic
in view at the establishment of the EPC. Notwithstanding the option to
allow for AI inventorship de lege ferenda, the marked dissimilarities
between human and AI “inventors” are said to stand in the way of an
extension of the inventorship concept by way of analogy. 33 Critical
views of the EPO’s argument that AI systems cannot be inventors since
they lack the legal capacity to hold inventors’ rights point out that
inventorship as a more factual concept does not necessarily engender a
particular legal capacity, that the EPO has – also with a view to the legal
fiction of rightholdership capacity in Art. 60(3) EPC – no competency
to assess an applicant’s legal capacity as a matter of substantive law,
and that EPC contracting states, whose law governs legal capacity, may
– and in some cases already started considering to – grant AI systems
the capacity to hold rights.34 While an AI system is no human employee,
the person using it may, a fortiori if compared to an employer, acquire
27
On the following, see J 8/20 and J 9/20. For commentaries on the EPO DABUS
case law, see e.g. STIERLE, 918; ENGEL, 1123; EPO, Grounds for decisions of 27
January 2020 on EP18275163.6 and EP18275174.3; EPA Urteil vom 27.1.2020 – 18
275 174.3, GRUR-RS 2020, 647; BONADIO/MCDONAGH/DINEV, 48, 56 seq.;
KIM/DREXL/HILTY/SLOWINSKI, 2 seq.; CELIK, 35 seq.
28
On the dispute over whether “inventor” is an autonomous EPC term or one governed
by applicable national law, see STIERLE, 918, 919.
29
Concurring STIERLE, 918, 920, but also pointing out the lack of clear guidance on
the matter by the language of the European Patent Convention or the previous EPO
case law; ENGEL, 1123, 1126; BONADIO/MCDONAGH/DINEV, 48, 56;
30
EPO, Grounds for decisions of 27 January 2020 on EP18275163.6 (para 34 seq., 37
seq.) and EP18275174.3 (para 35 seq., 38 seq.).
31
STIERLE, 918, 923; CELIK, 31; KONERTZ/SCHÖNHOF, 379, 401;
NÄGERL/NEUBURGER/STEINBACH, 336, 340; PAPASTEFANOU, 290, 293.
32
STIERLE, 918, 924, with further references to the corresponding discussion and case
law.
33
STIERLE, 918, 920.
34
STIERLE, 918, 921 seq., with reference to corresponding reflections in Estonia;
Declining PAPASTEFANOU, 290, 295.

rights stemming from such “employment” even absent an inventive
contribution. 35 This approach would be consistent with the view that AI
systems can easily meet all the requirements for the grant of a patent
(novel, useful, non-obvious, and likely to contribute to the public
good).36
In the litigation’s German prong, the Federal Patent Court of

Germany37 did not comment on “true” inventorship but only on how to
draft a patent application so as to avoid its rejection for formal
reasons. In principle, the Federal Patent Court seems to accept that
inventions can be generated by AI systems and that such inventions are
patentable. However, the Federal Patent Court is not prepared to accept
an AI system in the position of an inventor in the legal sense. A natural
person, e.g. the programmer or the user of the system, taking the
position of a “proxy inventor” may, however, be acceptable according
to the preliminary assessment of the Federal Patent Court and such
person can – noteworthy enough – be explicitly indicated, in the patent
application, as a mere proxy for the actual inventor - the AI system.
As to the UK, the appeals to the UK High Court and Court of

Appeal remained unsuccessful. Largely ignoring all policy arguments
for AI inventorship, the courts38 based their confirmation of the first
instance decision on an interpretation of the pertinent statutory
language, holding that the Patent Act clearly requires a person as the
inventor.39 Interestingly, the judges disagreed on whether the
requirements inventor designation (section 13 of the Patents Act 1977)
were fulfilled and what the consequences of non-compliance would be.
In Judge Bliss's view, the requirements for inventor designation were
met. In support, he analysed the law and legislative history (citing the
Banks Committee Report on the patent system). Judges Arnold and
Laing relied, for their contrary opinion, primarily on the consensus that
current law does not recognise an AI system as an inventor.
Furthermore, the court held that although Dr Thaler contended to be
entitled to apply for the patents as the owner of DABUS by virtue of a
rule of law, no such provision existed.40 The further appeal to the UK
Supreme Court is currently pending.
In the US, the District Court appealed to held that the US Patent
and Trademark Office’s (USPTO) rejection of the application was
consistent with the US Patent Act’s language and case law.41 In
35
STIERLE, 918, 921.
36
35 U.S.C. §§ 101–03, 112; RAVID/LIU, 2215, 2230 seq.; KONERTZ/SCHÖNHOF, 379,
411.
37
On the following, see 11 W (pat) 5/21 (Fractal Container), 18 W (pat) 28/20 (Neural
Flame), 12 W (pat) 21/20 (Fractal Container).
38
UK High Court [2020] EWHC 2412 (Pat) and Court of Appeal [2021] EWCA Civ
1374.
39
[2021] EWCA Civ 1374, para. 19.
40
[2020] EWHC 2412 (Pat), para. 30 ff.
41
On the following, see 1:20-cv-00903.

particular, the District Court highlighted that the America Invents Act
amended the Patent Act to provide an explicit statutory definition for
the term “inventor”. It follows from various elements of its wording that
this Act references a natural person. This corresponds to Congress’s
legislative intent when creating the America Invents Act in 2011, when
AI was already a conspicuous phenomenon. The further appeal to the
U.S. Court of Appeals for the Federal Circuit is still pending.
In Australia, DABUS fared better. While the application was

initially rejected by the Deputy Commissioner of Patents, the Federal
Court of Australia overturned this decision. It held that42 Australian
patent law does – contrary to copyright law – not expressly or inherently
require human inventorship. Consequently, there is no basis to exclude
AI from being an “inventor” within the meaning of the Patents Act, or
to “preclude a class of otherwise patentable inventions from
patentability on the basis of an exclusion that is not apparent from the
express words of the Act.43 Indeed, that would be the antithesis of
promoting innovation”. Furthermore, the court stated that such a human
inventorship requirement would be incompatible with the stated object
of the Act itself, namely “to provide a patent system that promotes
economic wellbeing through technological innovation and the transfer
and dissemination of technology. In doing so, the patent system
balances over time the interests of producers, owners and users of
technology and the public”. The court accepted that only a human or
legal person can be an owner, controller or patentee, but found that it
does not necessarily follow therefrom that the inventor can only be
human. The appeal44 against this decision to the Federal Court of
Australia should be decided in the coming weeks.
South Africa’s Companies and Intellectual Property Commission

accepted the DABUS patent as well. 45 Even though South Africa is a
jurisdiction that grants patents without examination on the merits, it
remains remarkable that the application was not considered formally
insufficient due to the lack of a person as designated inventor.
b. The EPO AI-Guidelines
The EPO Guidelines deal with AI in various sections, in particular

regarding the exclusion of patentability for mathematical methods and
the technical effect. Patentability exclusions under Art. 52(2) and (3)
EPC encompass the exclusion for mathematical methods (Art. 52(2) (a)
EPC), which also applies where a system is trained to apply a
mathematical method. As an AI-relevant exception, mathematical
42
On the following, see Thaler v Commissioner of Patents [2021] FCA 879, para. 10
ff.; KÄDE, 557.
43
Declining MATULIONYTE, 23.
44
Commissioner of Patents v Thaler [2022] FCAFC 62.
45
ZA2021/03242.

models can contribute to a technical effect – thus avoiding
unpatentability – where the mathematical method is "applied to a field
of technology and/or adapted for a specific technical implementation".
An example for a technical implementation is the assigning of data-
intensive training step execution of a machine-learning algorithm to a
Graphical Grocessing Unit (GPU) and preparatory steps to a Standard
Central Processing Unit (CPU), to take advantage of the parallel
architecture of the computing platform. Here, the claim must be
directed to the implementation of the steps on the GPU and the CPU in
order for this mathematical method to have a technical character.46 The
case "Spam classification/Microsoft" presents a non-patentable
counterexample,. In this case, the EPO Board of Appeal decided that
the classification of messages - including emails - depending on their
content is not technical per se.47
The explanations just given for mathematical methods also apply,

mutatis mutandis, to computational models and algorithms such as AI
and machine learning. AI and machine learning are “based on
computational models and algorithms for classification, clustering,
regression and dimensionality reduction, such as neural networks,
genetic algorithms, support vector machines, k-means, kernel
regression and discriminant analysis”.48 If, however, a process uses
technical means (e.g. a computer) or an device, it has a technical
character as a whole, which means it is not excluded from patentability
under Art. 52(2) and (3) EPC.49
Terms such as "support vector machine", "reasoning engine" or

"neural network" may, depending on the context, merely refer to
abstract models or algorithms, leading to their exclusion under Art.
52(2) and (3). However, it must be examined in each individual case
whether the subject matter has an overall technical character, or whether
it is a purely abstract mathematical method or algorithms. Examples of
technical contribution involving artificial intelligence and machine
learning are, according to the EPO Guidelines, the use of a neural
network in a heart monitoring apparatus for the purpose of identifying
irregular heartbeats, as well as the classification of digital images,
videos, audio or speech signals based on low-level features (e.g. edges
or pixel attributes for images).50 Steps towards generating a training set
and training the classifier may also contribute to the technical character
46
Guidelines for Examination in the EPO, Part G, Chapter II, 3.3,
https://www.epo.org/law-practice/legal-texts/html/guidelines/e/index.htm.
47
T 0022/12.
48
Guidelines for Examination in the EPO, Part G, Chapter II, 3.3.1,
49
Guidelines for Examination in the EPO, Part G, Chapter II, 3.3,
50

of the invention if they support achieving that technical purpose.51 The
classification of text documents, on the other hand, in terms of their
textual content alone, is not considered a technical purpose per se, but
only a linguistic purpose.52 This also applies for classifying abstract
data records or even "telecommunication network data records" without
any indication of a technical use.53
c. USPTO Guidance
According to US practice, a key hurdle for AI patenting lies in the

“Subject Matter Eligibility Test” (35 U.S.C. 101) and in the disclosure
requirements for computer-implemented functional claim limitations
(35 U.S.C. 112).
The “Subject Matter Eligibility Test” examines the following

steps: (1) Is the claim directed to one of the four statutory categories of
patentable subject matter (process, machine, manufacture and
composition of matter)? (2A) Is the claim directed to a law of nature, a
phenomenon of nature or an abstract idea (patentability exclusions,
examined in sub-steps “Prong One” and “Prong Two”)? (2B) Does the
claim recite additional elements that significantly go beyond the patent
exclusions? The “Subject Matter Eligibility Test” is then followed by
the examination of novelty and inventive step.
As a consequence of this test, abstract ideas (such as a

mathematical formula or equation), natural phenomena and laws of
nature are not patentable (35 U.S.C. 101). The USPTO Guidance
provides “judicial exception” examples, such as “systems that depend
on human intelligence alone,” “disembodied concepts,” “mental
processes,” and “disembodied mathematical algorithms and
formulas.”54 As a pertinent counterexample the Guidance mentions an
AI invention entitled “Method for training a neural network for face
recognition”, even though some of this invention’s claim elements may
be based on mathematical concepts (which is considered an abstract and
unpatentable idea) and are, thus, not eligible to be mentioned in the
patent application.55
51
52
T 1358/09.
53
T 1784/06.
54
Revised Patent Subject Matter Eligibility Guidance 2019, 2106.04 I.,
https://www.federalregister.gov/documents/2019/01/07/2018-28282/2019-revised-
patent-subject-matter-eligibility-guidance.
55
Subject Matter Eligibility Examples: Abstract Ideas - Example 39,
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_201901
07.pdf.

As to disclosure requirements for computer-implemented
functional claim limitations, the specification must disclose an
algorithm for performing the claimed specific computer function, or
else the claim is indefinite under 35 U.S.C. 112(b).56 In addition, the
Guidance addresses the disclosure requirements under 35 U.S.C. 112(a)
for claiming computer-implemented inventions with functional
limitations. In particular, the specification must describe a computer-
implemented invention in terms of how the functional result is
accomplished (e.g., an algorithm and/or a finite sequence of logical
steps), and not solely by the functional result itself. It is, however, not
necessary that the computer functions well-known in the prior art are
described in detail in the specification. 57
Finally, the USPTO Office of the Chief Economist has issued the
Artificial Intelligence Patent Dataset (AIPD), which divides patents
into eight AI component technologies using models based on the latest
insights in machine learning, including natural language processing,
computer vision, speech recognition, knowledge processing, AI
hardware, evolutionary computation, and planning and control.58 The
aim of AIPD is to assist researchers and policymakers focusing on the
determinants and impacts of artificial intelligence. Based on a machine
learning approach, the OCE created this file by analysing patent text
and citations to identify AI in U.S. patent documents.59
d. UK AI Guidelines
The UK Patent Office's Manual of Patent Practice has been updated

following the decisions concerning DABUS. To a substantial part, its
AI-related content reproduces the case law regarding DABUS.60
Furthermore, the Manual discusses the patentability of computer-
implemented inventions and, in particular, inventions involving
computer simulations and AI. It underlines that for AI inventions which
are computer-implemented, the same rules must be followed as for all
computer-implemented inventions. Computer-implemented
56
Examining Computer-Implemented Functional Claim Limitations for Compliance
with 35 U.S.C. 112, 1.19 seq.,
https://www.uspto.gov/web/offices/pac/mpep/s2161.html; see Williamson v Citrix
Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
57
Examining Computer-Implemented Functional Claim Limitations for Compliance
with 35 U.S.C. 112, 1.25 seq.; see Vasudevan Software, Inc. v MicroStrategy, Inc.,
782 F.3d 671 (Fed. Cir. 2015).
58
Artificial Intelligence Patent Dataset (AIPD), https://www.uspto.gov/ip-
policy/economic-research/research-datasets/artificial-intelligence-patent-dataset.
59
USPTO report “Inventing AI: Tracing the diffusion of artificial intelligence with
U.S. patents, 3, https://www.uspto.gov/sites/default/files/documents/OCE-DH-
AI.pdf.
60
Manual of Patent Practice, Section 7.11.1, 13.10.1; regarding DABUS see IV.1,
https://www.gov.uk/government/publications/patents-manual-of-patent-practice.

mathematical methods are not generally excluded from patentability,
provided they are applied to a technical contribution or to the solution
of a technical problem in a computer.61 The mere presence of
conventional computer hardware does not in itself mean that the
invention makes a technical contribution. Courts have consistently held
that such standard hardware is normally not part of the claim. 62
AI inventions may also constitute a mathematical method or

algorithm, which are excluded from patentability under section 1(2)(a)
of the UK Patents Act 1977. Patentability exclusions apply if the AI
invention is directed to an excluded process (e.g. a business method) or
merely improves programming, 63 whereas these exclusions do not
apply if the AI invention relates to a specific technical process outside
a computer or is part of its internal workings. 64
e. De Lege Ferenda Positions
Arguably a majority of patent law scholars is sceptical towards the

creation of new IPRs for AI-generated inventions.65 They caution
against overestimating the creative capacities of AI and confusing their
ability to learn or to automatically generate output with a capacity for
true inventiveness. 66 The innovation and disclosure incentives which
constitute the rationale of patent protection are keyed to humans,
whereas the need for similar incentivization seems doubtful with regard
to AI systems.67 This may call for a new balance to be struck between
proprietary and open innovation.68 AI output can be attributed to
humans based on the concept that the inventor "feeds" the AI and
enables it to develop ways of solving technical problems.69 As long as
national laws and international treaties link ownership of patents rights
to a human inventor or a legal entity having acquired the right from
such an inventor, it would not be easy for patent offices to award patent-
61
Manual of Patent Practice, Sections 1.29.5, 1.39.3,
62
Manual of Patent Practice, Sections 1.21.1,1.35,
https://www.gov.uk/government/publications/patents-manual-of-patent-practice;
Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7, para. 44, 73.
63
Manual of Patent Practice, Sections 1.29.4, 1.39.3,
https://www.gov.uk/government/publications/patents-manual-of-patent-practice;
Gale’s Application [1991] RPC 305, 328.
64
Manual of Patent Practice, Sections 1.39.3,
65
See, for instance, MÉNIÈRE/PIHLAJAMAA, 332; KIM, 443.
66
MÉNIÈRE/PIHLAJAMAA, 332, 335; KIM, 443, 446 seq.
67
MÉNIÈRE/PIHLAJAMAA, 332, 335; RAVID/LIU, 2215, 2239.
68
Cf. the present of Bader/Häfner at Workshop 2,
https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/technische-oekonomische-aspek
te.html.
69
PESCH/AUGENSTEIN, 84; SHEMTOV, 35; BOSHER, 7; CELIK, 30 seq.

style entitlements to AI systems which are neither.70 Absent clear,
technical parameters for determining whether an invention has been
“autonomously” made by an AI system, all attributions of rights to such
a system would engender severe legal uncertainty.71
Although recognizing certain of these counter-arguments,72 some

authors, including Gaetan de Rassenfosse,73 support an extension of
patent protection to cover AI-generated inventions.74 They underline
that patent law is concerned with the inventiveness of a technology
itself, rather than with the human mental process conceptualizing the
technology.75 From this perspective, it is decisive that AI-generated
output can fulfil the essential patent protection requirements, such as
novelty, non-obviousness, and usefulness. 76 AI has a long-standing
record of inventive outputs.77 While refusing patent-style protectability
to such output may not entirely remove the incentive to create
innovative AI, it leads to problems of logistics, fairness and efficiency.
Conversely, IPRs for AIs would promote disclosure and
commercialization, and remove the need to defend fictitious human
inventorship.78
2. AI Works under Copyright Law
The question of how copyright law deals with AI output has gained
great importance as well because “AI-assisted creation nowadays
encompasses almost the entire spectrum of subject matter listed in Art.
2(1) of the Berne Convention”.79 In fact, for copyright law AI-driven
70
Cf. MÉNIÈRE/PIHLAJAMAA, 332, 335, referring i.a. to Rules 4.6 and 4.17i)
Regulations under the PCT; Rules 51bis 1a) i) and 51bis 2i) Regulations under the
PCT; and Art. 138 I(e) EPC, Art. 65 II UPC.
71
KIM, 443, 444 seq.
72
Cf., for instance, 1079, 1105 seq., on the issue of appropriate incentivization in an
AI setting.
73
Workshop 3, https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/politische-rechtli
che-Gestaltung.html.
74
E.g. ABBOTT, 1079; RAVID/LIU, 2215; CELIK, 32.
75
ABBOTT, 1079, 1083.
76
RAVID/LIU, 2215, 2230 seq.
77
ABBOTT, 1079; CELIK, 32; RAVID/LIU, 2215, 2220.
78
ABBOTT, 1079, 1104.
79
HUGENHOLTZ/QUINTAIS, 1190, 1191.

innovation is even more a reality of today than for patent law, as novels
written80 or pictures painted81 by AI systems evidence.82
a. Human Creatorship Requirement
Arguably, there is – at least regarding EU level law and certain

European national copyright laws83 – a consensus that current copyright
law would not extend copyright protection to works generated by an AI
system without any human intervention that qualifies as original in the
sense of embodying a human intellectual creation and, thus, turns the
respective human person into an author in the sense of copyright law.84
As other authors have convincingly argued,85 this follows, inter alia,
from an interpretation of Art. 2, 6bis of the Berne Convention86 in the
overall context of the Convention, from Art. 27 of the Universal
Declaration on Human Rights,87 as well as from CJEU88 case law.
Consequently, it is necessary to assess whether the human contribution
to the AI output generation amounts to the exercise of a sufficient
creative choice.89 This does not necessarily require the human
80
A novel entitled "The Day A Computer Writes A Novel" was (purportedly) written
by a Japanese computer program. It was submitted for a writing competition (Hoshi
Shinichi Literary Award) and almost won.
81
For instance, a portrait called “The next Rembrandt” was the result of an 18-month
analysis of 346 paintings and 150 gigabytes of digitally rendered graphics by an AI
system. Everything about the painting - from its subject (a Caucasian man aged 30 to
40) to his clothing (black wide-brimmed hat, black shirt and white collar), facial hair
(small moustache and goatee) and the positioning of his face (facing right) - was
distilled from Rembrandt's work.
82
On the aforementioned examples, see POGAKU, 338.
83
But see also, for a parallel approach in the USA, USPTO, Compendium of U.S.
Copyright Office Practices § 101 (3rd ed. 2021), https://www.copyright.gov/comp3/,
Art. 306 and 313(2).
84
GERVAIS, 2068; HUGENHOLTZ/QUINTAIS, 1190, 1194 seq.; PAPASTEFANOU, 290,
294; GRIMMELMANN, 403; for Germany, see AIPPI German Delegation, 2 seq.;
ORY/SORGE, 710, 711; LOEWENHEIM, § 2 UrhG, note 38 with further ref.;
NORDEMANN § 2 UrhG, note 21 with further ref.; LAUBER-RÖNSBERG, 244, 246;
PEIFER, 222, 226 seq.
85
HUGENHOLTZ/QUINTAIS, 1190, 1193 seq.
86
Berne Convention for the Protection of Literary and Artistic Works,
https://wipolex.wipo.int/en/treaties/textdetails/12214.
87
Universal Declaration of Human Rights (UDHR), https://www.un.org/en/about-
us/universal-declaration-of-human-rights.
88
Case C-05/08 – Infopaq International v Danske Dagblades Forening (2009)
ECLI:EU:C:2009:465
(Infopaq); Case C-310/17 – Levola Hengelo v Smilde Foods BV (2018)
ECLI:EU:C:2018:899 (Levola Hengelo); Case C-469/17 – Funke Medien NRW
GmbH v Bundesrepublik Deutschland (2019) ECLI:EU:C:2019:623 (Funke Medien);
Case C-683/17 – Cofemel - Sociedade de Vestuário SA v G-Star Raw CV (2019)
ECLI:EU:C:2019:721 (Cofemel); Case C-833/18 – SI and Brompton Bicycle Ltd v
Chedech / Get2Get (2020) ECLI:EU:C:2020:461 (Brompton Bicycle).
89
Cf., for instance, Case C-469/17 – Funke Medien, para. 19. For case law closer to
the AI context, see e.g. Bordeaux Court of Appeal (France), 31 January 2005, No.

contribution to be discernible for a beholder in such a way that the
beholder could attribute a specific part of the output to the human
creator, as opposed to the output elements generated solely by the AI
system.90 What at least some deem necessary, however, is a human
conception of the work before it is expressed, albeit a rather general
conception that leaves room for non-preconceived expressive
features.91 For many an AI-generated output, there will be room for
human creative choice and conception92 throughout the stages of work
generation. In a conception93 phase the human creator may, for instance,
select the domain of a future work, its medium, subject matter, content
cornerstones and style, as well as the AI system for generating the work
and the input data94 it is provided with.95 Arguably, the question of
whether such selection activity amounts to sufficient creative choice
hinges on how autonomous, or predetermined by the human pre-
selection, the AI system subsequently operates.96 At the work execution
phase, AI systems tend to greatly reduce the human impact as it is no
longer the human author who carries out the acts of writing, coding,
painting, composing, etc.97 Moreover, increasingly complex and
independent, black box-style AI systems tend to even prevent the
authors from understanding how exactly the system executes the
work.98 Consequently, the execution phase may add little in terms of
human creative contribution. At the redaction stage the human author
may, for instance, have to select between various drafts,99 refine the
initial output, or add components the AI system did not generate.100
Evidently, the room for human creativity in this phase strongly depends
on the AI system’s output quality and may shrink as this quality
increases. This development could induce stakeholders who favour
maintenance of broad copyright protection for AI output to endorse
questionably low thresholds for creative redaction, such as the mere
03/05512; Paris District Court (France), 5 July 2000, No. 97/24872 (Matt Cooper v
Ogilvy and Mather); AIPPI German Delegation, 3 seq.
90
HUGENHOLTZ/QUINTAIS, 1190, 1198, with reference to the decision Case C-469/17
– Funke Medien, para. 23.
91
HUGENHOLTZ/QUINTAIS, 1190, 1200; GINSBURG/BUDIARDJO, 343, 361; BUR, 270
seq.
92
This finding necessarily implies the presence of human intervention as such. To the
extent one qualifies mere human intervention as a copyright protection requirement
distinct from creative choice, this requirement is, hence, fulfilled. Cf. on this doctrinal
approach an finding HUGENHOLTZ/QUINTAIS, 1190, 1201.
93
The terminological distinction between conception, execution and redaction follows
94
For an example, see AIPPI German Delegation, 14.
95
HUGENHOLTZ/QUINTAIS, 1190, 1202; there are, however, also more reticent views
on whether setting the output objective of, or selecting the corresponding input data
for an AI system suffices for human authorship, see AIPPI German Delegation, 4.
96
Cf. AIPPI German Delegation, 4.
97
98
HUGENHOLTZ/QUINTAIS, 1190, 1203; HUGENHOLTZ/QUINTAIS/DERVAIS, 8.
99
Very critical on whether a mere selection between finalized draft suffices for human
creatorship AIPPI German Delegation, 4.
100
HUGENHOLTZ/QUINTAIS, 1190, 1203 seq., with examples and case law references.

decision to present an output as an artwork.101 If various elements of
human contribution take place at various stages of the output generation
process, they can, and must, all be considered in an assessment of
whether they jointly amount to creative choice and conception. 102 Such
an assessment can, of course, present difficulties to evidence the
respective human and AI contributions in the creation process.
Frequently, it will not be possible to distinguish between human and
non-human contributions at first glance.103
Moreover, even commentators who judge copyrights to be

broadly available for AI-generated works104 admit that in some settings
– already today105 and maybe increasingly in the future – human
contribution remains so limited as to prevent copyright protection under
traditional rules.106 Others conclude that the creative capacity of
advanced AI systems largely removes copyright protectability of their
results, as humans have lost sufficient control over the creative
process.107
b. Protection by Existing Related Rights
Of course, other IPRs may still be available for such content, in

particular neighbouring/related, database protection, or trade secrets
rights.108 As pertinent copyright-related rights, scholars mention, in
particular, the neighbouring rights for photographs, audio recording,
publishers of newspapers, magazines, films, or moving pictures,
potentially also for authors of scientific editions.109 Questions regarding
101
On the discussion whether this suffices for a creative contribution, and on Max
Kummer’s corresponding approach, see HUGENHOLTZ/QUINTAIS, 1190, 1204;
GINSBURG/BUDIARDJO, 343, 360; critical AIPPI German Delegation, 4; LAUBER-
RÖNSBERG, 244, 245.
102
HUGENHOLTZ/QUINTAIS, 1190, 1201, 1204 seq., also on the conception and
redaction stages as (typically) the main strongholds for human creativity in AI-
supported work generation and on the relevance of (iterative) interactions between the
various phases of the creation process. Even approaches which are rather critical on
whether individual human contributions at the conception/execution/redaction stage
suffice for creatorship allow for creatorship resulting from a combination of such
contributions, see AIPPI German Delegation, 5.
103
PAPASTEFANOU, 290, 295; LAUBER-RÖNSBERG/HETMANK, 641, 647.
104
E.g. HUGENHOLTZ/QUINTAIS, 1190, 1205; DREIER, 882.
105
For examples, see HUGENHOLTZ/QUINTAIS, 1190, 1206.
106
107
GERVAIS, 2093 seq.
108
SCHEUERER, 834, 839, 844; HUGENHOLTZ/QUINTAIS/GERVAIS, 88 seq.;
HUGENHOLTZ/QUINTAIS, 1190, 1213; especially for the availability of database rights
to selections of AI input data or AI output collections, see AIPPI German Delegation,
4.
109
AIPPI German Delegation, 8 seq., 13, with further references and the suggestion
to statutorily clarify the availability of certain related rights for AI output,
https://aippi.soutron.net/Portal/Default/en-GB/RecordView/Index/254;
HUGENHOLTZ/QUINTAIS/GERVAIS, 88–95.

their applicability to AI-generated output differ, however. As to
neighbouring rights for photographs, much hinges on the general
(including non-AI settings) position a jurisdiction takes on whether
such rights extend to photographs – in the sense of pictures taken by
optical means110 – that are generated automatically, without human
intervention (e.g. radar or satellite photos).111 With a view to press
publishers rights’ goal to also protect free speech and discourse,
information quality, and ultimately a democratic and free society, some
doubt that they should extend to purely AI-generated press products.112
Where the protection of risk and investment decisions looms
particularly large as the rationale for a neighbouring right, such as in
the case of audio recordings or moving pictures, the application of such
a right to purely AI-generated output seems relatively
straightforward.113 Some suggest that the availability of neighbouring
rights for AI output may be made dependent upon disclosure of the
involvement of AI in generating such output,114 thereby fighting a
dissimulation problem parallel to that in patent law.
Protection of AI output by a sui generis database right depends,

for the EU, first and foremost on whether the requirements under the
EU Database Directive115 are met. According to Art. 1(2) Database
Directive, a database “shall mean a collection of independent works,
data or other materials arranged in a systematic or methodical way and
individually accessible by electronic or other means”. Its sui generis
protection depends, furthermore, on the fact “that there has been
qualitatively and/or quantitatively a substantial investment in either the
obtaining, verification or presentation of the contents to prevent
extraction and/or re-utilization of the whole or of a substantial part,
evaluated qualitatively and/or quantitatively, of the contents of that
database” (Art. 7(1) Database Directive). Commentators do not
consider the AI-generated nature of databases to be a factor that rules
out their protection by such sui generis rights.116 Protection of the
database itself does, however, not include output the AI system
generates by using (also) the protected database. 117
110
Pictures generated otherwise, e.g. from an image database an AI system has access
to, but without fresh optical input, can, arguably, not enjoy protection under this
extended right, see AIPPI German Delegation, 9 seq.
111
On this discussion in German law, see AIPPI German Delegation, 9 seq., with
further references.
112
AIPPI German Delegation, 10.
113
AIPPI German Delegation, 10, with further references.
114
115
Directive 96/9/EC of the European Parliament and of the Council of 11 March
1996 on the legal protection of databases, https://eur-lex.europa.eu/legal-
content/EN/TXT/?uri=celex%3A31996L0009.
116
117

c. Specific Legislation
Things look different where jurisdictions, such as e.g. Ireland or the

UK, have established specific rules for granting copyrights to AI-
generated works118 even if human creative contribution is doubtful at
best. Irish law, for instance, has established a category of works
“generated by [a] computer in circumstances where the author of the
work is not an individual”, and as the (proxy) author of which it
designates “the person by whom the arrangements necessary for the
creation of the work are undertaken”.119 UK law also accepts copyright
protection for computer-generated works, even absent the creative
involvement of a human author (on UK law cf. also below IV.3.b.iii).120
The South African Copyright Act equally contains a pertinent
provision, which stipulates that the 'author' of a computer-generated
literary, dramatic, musical or artistic work or computer program is the
person by whom the arrangements necessary for the creation of the
work were undertaken (Section 1(1)(h)).121 Subject to invalidity for
non-compliance with overriding (EU or international convention)
law, 122 such provisions obviate the need to identify authorship-
permitting human creative contribution. Consequently, the focus of the
entitlement analysis shifts even more strongly to the allocation stage
(cf. below IV.3.b.ii). At the same time, copyrights on AI-created works
suggest certain adjustments, such as the curtailing of moral rights to the
extent one links such rights to human creatorship.123
d. De Lege Ferenda Proposals
De lege ferenda, some important copyright scholars do not perceive the

need for extending existing copyright protection.124 Certain others
propose, however, AI output-specific additions to the copyright
toolbox. Part of them favour – subject to in-depth preparatory research
and reflection125 – the introduction of a special neighbouring right,
serving to protect ‘‘authorless’’, AI-generated output against
118
Such rules are distinct from legal fictions in certain copyright laws according to
which not a natural person but a legal person is deemed to be the author of a work,
see e.g. US Copyright act , Title 17, § 101 and §201.
119
Art. 2(1) Copyright and Related Rights Act 2000 of Ireland. Cf. on this example
also HUGENHOLTZ/QUINTAIS, 1190, 1211 seq., with further references.
120
Sec. 9 (3) and Sec. 178 of the UK Copyright, Designs and Patents Act 1988 (as
updated), https://www.legislation.gov.uk/ukpga/1988/48/section/178; LAUBER-
RÖNSBERG/HETMANK, 641, 644.
121
Copyright Act 1978 (South Africa) s 1(1) (definition of ‘author’); MCCUTCHEON,
915, 956; GUADAMUZ, para. 3.1 with ref.
122
HUGENHOLTZ/QUINTAIS, 1190, 1211 seq., for instance, express EU law
compliance concerns.
123
124
Skeptical, for instance, HUGENHOLTZ/QUINTAIS, 1190, 1213.
125
RAMALHO, 16.

misappropriation.126 They reason,127 inter alia, that copyright law would
otherwise disregard veritable – albeit not human – acts of creation,
create protection gaps, and further stratagems that hide the true role of
AI in the creation of a work. A new type of neighbouring/sui generis
right could, on the contrary, incentivize investments into AI systems by
providing legal certainty and the option to monetize (e.g. through
licensing) the creative potential of these systems. Due to the flexible,
customizable protection neighbouring rights extend, such a legal design
could avoid over-protection (breadth of protection, allocation, term,
etc.).128
A new suis generis right, modelled less closely after existing

related rights, would offer even more flexibility in the protection of AI-
created works. The EU legislator’s decision to create a sui generis
database right has shown that EU law does not generally bar the
establishment of new types of IPRs. However, the largely unproven
(economic) ramifications and benefits of the database right evidence
also the need to cautiously balance the legal uncertainty and restrictions
on market activity a sui generis right for AI-created works is bound to
produce against its beneficial effects, which remain to be proven. 129
Even proponents of new neighbouring/sui generis rights perceive,

however, the need to prevent overcompensation, for example in settings
where the AI system requires only little investment and training, where
database rights already grant sufficient protection.130 To avoid such
over-compensation, but also to not incentivize sweeping content
monopolization through content generation “on stock”, they consider
counter-measures such as a need to prove AI creation, a use
requirement, compulsory, though compensated, licenses, fast
exhaustion, a public interest exception, or formal right acquisition
requirements.131
126
SENFTLEBEN/BUIJTELAAR, 3, 19; RAMALHO, 16; PAPASTEFANOU, 290, 295;
LAUBER-RÖNSBERG/HETMANK, 641, 647. For parallel reflections in patent law, see
KONERTZ/SCHÖNHOF, 379, 411. AIPPI German Delegation, 18 seq., with the proposal
to model such new right after the neighbouring right for film producers (§ 94
Copyright Act in German law).
127
On the following, see for instance, AIPPI German Delegation, 18.
128
SENFTLEBEN/BUIJTELAAR, 3, 19.
129
Cf. also RAMALHO, 16; see further the first evaluation of Directive 96/9/EC on the
legal protection of databases, 2,
https://op.europa.eu/en/publication-detail/-/publication/5e9c7a51-597c-11e8-ab41-
01aa75ed71a1.
129
E.g. US Copyright act, Title 17, § 101 and §201.
130
131

3. Sui Generis IPRs and the Allocation Approach
a. A Cause for Sui Generis Protection?
If AI systems cannot acquire IPRs under current IP laws while a fiction

of traditional human inventorship/creatorship, and thus IPR ownership
to their output, seems unsatisfactory as well, one solution could lie in
the creation of one or several new types of IP rights to which human
creatorship/ownership is not inherent. Concepts132 for such new rights
are usually modelled after existing IPRs133 but, doctrinally speaking,
the new IPRs may be sui generis rights, not just extended versions of
the existing set. Instead of conceptualizing a single sui generis IPR that
covers all sorts of AI output, current approaches lean towards different
rights for different types of output, especially one patent-like right for
more technical innovations and one copyright-like position for works
of art.134 Previous sections of this paper have already reported on the
respective discussions in patent and copyright law.
Another interesting question would be how to deal with software

because the present system of granting copyrights for software as such
and patents for certain types of computer-implemented inventions
(CIIs) has considerable shortcomings. For instance, the standard
copyright protection period (summarily speaking 50 or 70 years post
mortem auctoris)135 seems very long for standard software that is
regularly, and at relatively short intervals, put out of application by
software updates. Furthermore, rules for the protectability of CIIs are
much disputed and partly arcane. As an example, the EPO Enlarged
Board of Appeal recently confirmed, in a much-noticed decision
(Pedestrian Simulation), the applicability of the so-called “COMVIK
approach” to complex, computer-implemented simulations.136
Consequently, even simulations with a powerful and valuable
predictive capacity cannot be patent-protected as such, unless they
generate a further technical effect. However, the Board of Appeals
apparently felt the need to make the treatment of sophisticated
simulations slightly more flexible. While this seems appealing in
principle, it will likely prove intricate to apply the legal concepts of
“potential” and “virtual” technical effects employed to achieve the
desired flexibility. Ultimately, the framework established by Pedestrian
Simulation may even be too narrow for certain settings altogether, e.g.
132
Cf. e.g. BONADIO/MCDONAGH, 11 seq.; NOTO LA DIEGA, 7 seq.; ZURTH, 14 seq.;
WIPO dialogue on intellectual property and artificial intelligence Second session, 2.
133
For an example (new neighbouring right modelled after film producer right), see
134
NOTO LA DIEGA, 13.
135
E.g. Sec. 12 UK Copyright Act; Section 64 German Federal Act on Copyright and
Related Rights.
136
EPO Enlarged Board of Appeal, case G 0001/19, ECLI:EP:BA:2021:G000119.20
210310.

the protection for AI-empowered digital twins137 (both of objects and
persons).
Undoubtedly, sui generis IPRs would give much leeway for

designing, almost from scratch, a system for the specific protection of
AI-created assets. On the other hand, the already high density of IP
protection suggests that, at least in certain sectors, entire layers of
additional IPRs might generate overprotection harmful to dynamic
efficiency and competition in general.138 Furthermore, legal uncertainty
and implementation costs would – even after the somewhat daunting
task of designing an entire system of AI IPRs is performed – be
substantial at least during an initial phase after the introduction of new
rights, and this phase may last quite a while. At least until further
research evidences more clearly that underprotection and market
failures cannot be cured otherwise, the present authors, and arguably a
majority of IP scholars and practitioners,139 caution against the
introduction of sui generis AI IPRs. The discourse with economists and
company representatives in the framework of the AI/IP Research
Project has, as yet, not produced such clear evidence.140
b. The Quest for Allocation
This is, however, not to say that nothing ought to be done. The sensible
allocation of IPRs, and very much also of AI-related IPRs, to natural or
legal persons is essential for achieving the IP system’s goals to
incentivize innovation and foster transactions – licensing in particular,
but for instance also the use of IP as collateral in M&A and venture
capital transactions – which help to disperse and implement protected
content. The conduct-steering effect of liability, as well as clear
responsibilities in the IP system’s self-protection through the
enforcement of IPRs against infringing use are further allocation-
related benefits. Nor would sui generis AI IPRs remove this need for
sound allocation rules as today, and for a long time to come, only
persons can be in the driver’s seat for making transaction and
innovation investment decisions. A law that initially accords IPRs to an
AI would, therefore, nonetheless have to designate persons that
subsequently acquire ownership of, or are otherwise entitled to transact
over, these rights. In view of these reflections, the AI/IP Research
Project advocates an “allocation approach” that focusses its efforts on
elaborating appropriate rules for distributing the legal entitlements to
AI output. In its next phase, the Project will review in greater details
137
BAJAJ/ SEEMA, 288, 288.
138
Cf. for such concerns, from a competition and economics perspective, e.g. BESSEN,
Boston University Law & Economics Research Paper No. 18–16, June 2018.
139
Cf. the references in sections IV.3.a (patent law), IV.2.d (copyright law).
140
Critical, for instance, also HILTY/HOFFMANN/SCHEUERER, 50 seq.

existing rulebooks – for a few examples see below – and the suitability
for paradigmatic business settings of suggested criteria for making
these allocation decisions,141 such as creatorship of or investment in the
output-generating AI system, control over the system at the time of
innovation, responsibility for task and output selection etc. The
Research Project hopes that this focus invites the IP community to
equally engage more decidedly in a “quest for allocation”.
i. Allocation Through the Works Made for Hire Doctrine
According to the general US law rule, copyright "shall first vest in the
author or authors of the work“,142 who may then assign their exclusive
rights in whole or in part to a third party. 143 As an exception to this rule,
for "works made for hire", i.e. created by an employee in the course of
his/her employment, the employer is deemed to be the author and owner
of the copyright unless the employment contract contains an express
agreement to the contrary.144 Works produced by an independent
contractor, instead of an employee, may also be considered “for hire”
as "commissioned works" if they are “specially ordered or
commissioned” and fall into one of the work categories enumerated in
17 U.S.C. 101(2).145 Works outside these categories (e.g. software) are
not considered “made for hire” and their creator will also be their
owner.146
ii. Allocation Under the America Invents Act
Mirroring copyright law, U.S. patent law assumes, in principle, that

inventors own their inventions, even if conceived in the course of
employment. At the same time, it is common for US scientific and
technical employees to assign their patent rights to their employer.147
Pursuant to 35 U.S.C. § 111, the inventor must apply for the patent even
if ownership rights were assigned to someone else. If no assignment is
filed with the USTPO (usually jointly with the patent application), the
employer receives what is called a shop right. The shop right doctrine
states that an employee who uses his employer's resources must grant
the employer a non-exclusive, royalty-free, and non-transferable
licence to use the invention. An employer holding shop rights may not
141
Cf., for instance, KONERTZ/SCHÖNHOF, 379, 412.
142
17 U.S.C. 201(a).
143
17 U.S.C. 204(a).
144
17 U.S.C. 201(b).
145
O’CONNOR, 1227, 1234.
146
CONTRERAS, 18.
147
CONTRERAS, 23.

transfer those rights via license or assignment. In consequence of these
limitations, shop rights are not considered true property rights.148
The “hired to invent doctrine” goes farther than shop rights: It

states that if the employee is hired only to make a specific invention or
solve a particular problem, he/she is considered to have already been
paid for the inventive activity and cannot, therefore, claim any patent
rights.149 In evaluating whether the "hired to invent doctrine" applies,
courts look to the specific relationship between employer and employee
at the beginning of the invention process to determine if an implied
contract of assignment of invention rights exists.150 In cases where there
is no written agreement between the employer and employee regarding
patent rights, the "hired-to-invent" doctrine can provide the employer
with a chain of title.151 Unlike in copyright law, the doctrine has no
effect on inventorship. Therefore, the hired-to-invent exception is not a
patent-law version of works made for hire. The difference is that in
patent law, natural persons are preserved as inventors, whereas in
copyright law, the employer is considered the author and owner.152
iii. The Copyright Allocation Discourse
The copyright allocation discourse starts from identifying the person

who exercised the creative choices sufficient to turn the AI output into
a copyright-protected work (“choice-maker” cf. above IV.0).153
Especially for settings in which a general purpose AI is given a specific,
creative task from within the range of functions the AI system can
perform, the choice maker will usually be the person setting this task
and employing the AI for pursuing it.154 In other settings, AI users
generate copyrightable output but the underlying creative choices have
been made by the AI system developer.155 Whereas single choice
makers should unilaterally acquire the copyrights resulting from their
choices, creative contributions by several choice makers may result in
148
CONTRERAS, 23.
149
United States v Dubilier Condenser Corp., 289 U.S. 178, 187 (1933).
150
Teets v Chromalloy Gas Turbine Corp., 83 F.3d 403, 407 (Fed. Cir. 1996).
151
O’CONOR, 1227, 1241.
152
O’CONOR, 1227, 1241.
153
HUGENHOLTZ/QUINTAIS, , 1190, 1208.
154
HUGENHOLTZ/QUINTAIS, 1190, 1209, pointing out in particular that joint copyright
ownership would require a concerted creative effort by the developer and the user.
155
HUGENHOLTZ/QUINTAIS, 1190, 1208; AIPPI German Delegation, 3, referencing
case law on computer programs outside AI; AIPPI UK National Group, 5;
GINSBURG/BUDIARDJO, 345, 346 with reference to the players of computer games and
case law on the lack of authorship of such players. Note that the determination of the
AI “developer” can be intricate in itself, for instance where several persons have
contributed software, databases, or other works to the AI or where other components
than mere software are essential to the AI system, e.g. specifically designed
computing units or tailor-made tools for generating physical output; cf. also

joint copyright ownership.156 Details of such joint ownership remain,
however, to be clarified, including for instance the necessary level of
coherence between the general work conceptions of various human
contributors or work continuation/revision settings.157 From a
commercial and enforcement perspective, scholars point out that AI
system developers may frequently waive, license royalty-free, or
otherwise contractually refrain from enforcing their co-authorship
claims in output generated by their systems, so as not to discourage
customers from investing in them. 158
Copyright allocation takes a different, though not an entirely

unrelated path where jurisdictions have established specific rules for
according rights to AI-generated works (cf. also above, IV.2.c). The
criteria codified in such specific provisions are then the decisive
allocation parameters, but they will likely reflect parameters developed
in a more generic allocation discourse. Irish law, for instance, considers
as author/right-holder “the person by whom the arrangements necessary
for the creation of the work are undertaken”.159 A closer look reveals
that this language is of little guiding value. Does “necessary”, for
instance, codify something like a conditio sine qua non-criterion? In
that case, a developer of the respective AI system would almost always
qualify for co-authorship because the work could not have been created
without her system. More convincingly, the vagueness of the
“necessary arrangement” wording requires specification along the
general parameters sketched above (IV.0). Under UK law, if a work has
no human author, the right owner shall be taken to be the person by
whom the arrangements necessary for the creation of the work are
undertaken. 160 The British legislator thus intended to provide a
protection for automated creation, such as satellite photographs.161 The
statutory language seems to suggest that the British and Irish regimes
recognise a lack in creative input for computer-generated works und
attribute authorship to outputs that would not be considered original
“works” under EU copyright law.162 In its case law, the Court of Appeal
156
HUGENHOLTZ/QUINTAIS, 1190, 1208 seq., with the example of “The Next
Rembrandt” project in which AI developers, engineers and art historians collaborated
to have an AI system paint in the fashion of Rembrandt. Similar, for German law,
157
For further aspects, see AIPPI German Delegation, 12.
158
HUGENHOLTZ/QUINTAIS, 1190, 1209 seq., referring by way of example to the terms
of use of the DeepL translation service.
159
Art. 2(1) Copyright and Related Rights Act 2000 of Ireland. Cf. on this example,
and on the EU law-compliance of such Member State provisions, also
HUGENHOLTZ/QUINTAIS, 1190, 1211 seq., with further references.
160
Sec. 9 (3) of the UK Copyright, Designs and Patents Act 1988; DE COCK BUNING,
310, 318.
161
DE COCK BUNING, 310, 318; LAUBER-RÖNSBERG/HETMANK, 641, 644.
162
GUADAMUZ, para. 3.1; HUGENHOLTZ/QUINTAIS, 1190, 1211.

for England and Wales has not yet clarified whether the existence of a
"work" depends on a human author.163
The intricacies of assessing authorship regarding AI-generated

output could exacerbate copyfraud problems, either because the wrong
person claims ownership of copyrights vested in another person or
because existence and ownership of copyrights are claimed where lack
of human creative contribution (cf. above IV.0) prevented such rights
from emerging at all. 164 It remains to be seen whether this problem
becomes urgent enough to suggest legal reaction, including criminal
law sanctions in case of wrongly claimed human creative
contribution165 or an adaptation of authorship presumption rules.
The discussion on how to allocate neighbouring rights covering

AI-generated output corroborates the view that even broad acceptance
of AI system ownership of IPRs would not remove the allocation issue:
Even those who deem it possible that neighbouring rights result from
AI system activity without human intervention tend to consent that such
rights can, eventually, only be held by a natural or legal person.166
V. AI Impacts on Operating the Current IP System
Important as fundamental issues of AI-related IPR allocation are, they

must not cause us to overlook the effects that the increasing use of AI
systems will likely have on the practical application of current IP laws
and procedure.
1. AI Raises the Bar
To highlight, in this context,167 only three areas, AI can, firstly, raise

the bar for protectability by judging on its prerequisites more
restrictively than humans would do.168 For instance, a sophisticated AI
163
Court of Appeal (England and Wales) Nova Productions Ltd v Mazooma Games
Ltd & Ors (CA) [2007] EWCA Civ 219; 14 March 2007.
164
165
In favor: AIPPI German Delegation, 20.
166
167
Further aspects exist, of course, for instance, the effect of AI-created perception
bubbles, e.g. in social media networks, on brand recognition standards and trademark
law. As another point, the use of AI in the generation of intangible output is perceived
to increase the need for harmonization between the jurisdictions as the design of AI
systems can easily make them accessible from various jurisdictions or distribute their
components across several jurisdictions, potentially resulting – but for harmonization
– in diverging or unclear legal treatment of output from the same AI system; see AIPPI
German Delegation, 14.
168
ABBOTT, 1079, 1125; MÉNIÈRE/PIHLAJAMAA, 332, 334.

in the role of a POSITA,169 or performing prior art searches, may find
many an improvement of existing technology obvious or detect, in the
expanses of the internet and foreign language databases, prior art a
human examiner would have overlooked. Helpful as this increased
rigidity may be for preventing IP thickets – a task made potentially even
more crucial by the rise in innovative AI output – it could also further
a two-tier economy in which strong players, commanding the resources
necessary for employing top-level AI systems, stand a markedly better
chance to acquire IPRs, or prevent their competitors from doing so, than
other market participants. While this risk must be taken into
consideration, it should not – in the opinion of the present authors – be
mitigated by establishing different protection requirements/thresholds
for content created by AI systems and humans respectively.170 To give
only one argument, a distinction between AI-created and human
inventions can be hard to verify and invites jugglery. Incentivizing
applicants to dissimulate the use of AI in their innovation processes
would run counter to the need for increased transparency in that regard.
Furthermore, the incorrect declaration of human inventorship and
downplay of AI contribution may be hard to remedy through validity
challenges, if and because third parties – other than a “true” human
inventor who does not exist in such cases – lack the standing for such
challenges according to applicable (national) law.171 The stance taken
here is, however, far from undisputed. For instance, some copyright
experts suggest shorter protection terms for neighbouring rights
covering AI output, so as to maintain an incentive for humans to
generate similar output, even where costs for the human output
generation can no longer compete with those of AI output generation.172
2. Protection Carve-Outs in Favor of AI Systems
Second, to deploy their full beneficial potential AI systems need access

to datasets and further content that itself enjoys, to a considerable
extent, IPR protection. Especially in the area of copyrights,173 this
suggests protection carve-outs174 or compulsory license obligations
169
Person having ordinary skills in the art, a (fictional) observer the perspective of
whom decides, for instance, whether a novel concept qualifies as non-obvious, see
e.g. case T 426/88, ECLI:EP:BA:1990:T042688.19901109 and T 0560/89,
ECLI:EP:BA:1991:T056089.19910424.
170
See also ABBOTT, 1079, 1125.
171
STIERLE, 918, 923, with references to Art. II § 6 para 3 German IntPatÜG
(restricting a challenge based on Art. 138(1)(e) EPC to a true inventor) and further
national laws.
172
173
Other areas come into play as well, though, for instance a reverse engineering
permission in trade secrets law.
174
This aspect must be distinguished from the question of whether different protection
carve-outs should apply to works created by humans alone and works created by

where IPRs would otherwise stymie content access.175 In fact, several
jurisdictions, including the UK, Singapore and Switzerland, have
already legislated to this effect (cf. hereafter).176 Where protection
carve-outs are lacking or undeserved, AI-committed infringements and
a potential ensuing liability of the persons/entities “behind” the
infringing system challenge existing liability rules. In spite of some
pertinent case law and literature,177 many questions remain to be solved,
including the appropriate standard for responsibility allocation to AI
developers, controllers and/or users, an issue that interrelates with the
allocation of AI IPRs (cf. 0).
a. The Swiss Research Exemption
Revised Swiss copyright law permits, by way of a barrier to protection

(Schutzschranke), the use of works for the purpose of scientific
research.178 Scientific research is defined broadly, as any systematic
search for new knowledge in the field of scientific disciplines and
beyond their boundaries.179 Hence, not only public research institutions
but also private company research – as long as it is genuine research180
– profit from this barrier.181 One reason for the legislature not to exclude
private company research from the barrier’s scope was that “such a
restriction would cause too many demarcation difficulties in
practice.”182
The protection barrier’s main justification lies in the fact that text
and data mining (TDM) – an activity the legislator intended to foster –
involves duplication of the works to be analysed. The duplication
occurs when the copies of the works are reformatted and the
information to be analysed is copied and stored.183 That the barrier
actually covers data mining follows from the phrase "insofar as they are
humans who use an AI system. Against a differing carve-out approach AIPPI German
Delegation, 16.
175
See, for instance, from a US fair use doctrine perspective, SOBEL, 45–97; for a
compensated access right to databases, see AIPPI German Delegation, 19.
176
To sketch only one example here, Singapore’s 2021 Copyright Act 2021 created a
statutory exception for copying copyrighted works and performances for the purpose
of computer-assisted data analysis, e.g., sentiment analysis, text and data mining, and
machine learning training (sections 243 and 244 Singapore Copyright Act). Both
commercial and non-commercial uses are allowed and the exception cannot be
contractually overridden.
177
Cf. for instance CJEU C-236/08-C-238/08, ECLI:EU:C:2010:159, Google France
v Louis Vuitton, on search engine operator liability for algorithmic trademark
infringement; RAVID/LIU, 2215, 2249 seq., on control-based liability for AI actions.
178
Art. 24d of the Swiss Copyright Act.
179
Swiss Federal Gazette (BBl) 2018, 629.
180
Barrelet/EGLOFF, para. 2; MARMY-BRÄNDLI, para. 664.
181
Barrelet/EGLOFF, para. 2; MARMY-BRÄNDLI, para. 664.
182
183
MOSIMANN/HOSTETTLER, 123, 133.

caused by the application of a technical process" and from the fact that
interference with the right of reproduction and processing is permitted,
which corresponds to the coverage of the rights affected in data
mining.184 Art. 24d of the Swiss Copyright Act does not explicitly
mention text and data mining by name, but names a reproduction as
such, which is caused by the application of a technical process. The
legislator chose this open formulation in order not to unnecessarily limit
the exception with regard to future comparable technologies.185
b. The UK Protection Barrier
The first country to introduce a barrier to protection in favour of TDM

was, however, the UK in 2014, albeit with a scope limited to non-
commercial research.186 Afterwards, France, Estonia, Germany and the
EU followed this lead.187
Although case law has interpreted the term “research” broadly,188

the distinction between commercial and non-commercial research
causes problems in practice.189 Because of them, and because EU law,
but also the laws of other major UK trading partners (e.g. Japan, the US,
Canada, China and Singapore) provide exemptions for both commercial
and non-commercial research, there is a debate about introducing a
broader TDM exemption in the UK. 190
As to further particularities of the UK rules, lawful access to the

work is a precondition for the TDM barrier to apply. 191 The barrier
cannot be derogated by contract clauses.192 It also should be noted that
the exemption does not cover reproduction of databases. 193
184
185
BRÜHWILER, para. 267.
186
Art. 29A of the Copyright, Designs and Patents Act 1988.
187
GEIGER/FROSIO/BULAYENKO, 17.
188
JONDET, 25, 28.
189
Piere Oliviere, Workshop 3, https://www.cipco.uzh.ch/de/veranstaltungen/IP-
KI/politische-rechtliche-Gestaltung.html; JONDET, 25, 29.
190
IP Federation, 1 seq.; The IP Federation stated that “it is absolutely necessary that
the Copyright, Design and Patents Act (CDPA) be amended to expressly allow for the
reproduction of lawfully accessed works to facilitate TDM, for commercial or non-
commercial purposes”.
191
JONDET, 25, 29.
192
JONDET, 25, 29.
193
JONDET, 25, 29.

c. AI Tools for IP Offices
Third, for IP Offices AI systems and their output are not only an object
of examination but also a tool to work with. A module in the AI/IP
Research Project dedicated to a dialogue with IP Office representatives
from various jurisdictions revealed a number of AI tool projects already
underway.
The Intellectual Property Office of Singapore (IPOS), for

instance, introduced “IPOS Go Mobile” as a commercial, AI-powered,
image-based search engine. It enables not only examiners but also the
general public to search for visual or conceptually similar
trademarks. 194 An assistive feature is under development which uses
Natural Language Processing (NLP) and other machine learning tools
to check the formalities of patent applications. The feasibility of a
patent auto classification tool that uses NLP to classify the patent
applications and assist examiners by understanding the patent document
is also being tested.195
WIPO promotes the use of AI tools by IP Offices and the

information exchange on such activities between them. WIPO itself
uses AI in different areas of its organization, from automatic
classification, search assistance, examination or formalities checks, and
helpdesk services to machine translations. WIPO Translate, for
instance, is designed for the translation of patent documents into
eighteen different language pairs. It is available for free to the general
public and all IPOs. The automated image search within WIPO’s Global
Brand Database helps to simplify the research around visually similar
trademarks and other related brand information. Its “IPCCAT” software
assists patent filers and examiners in classifying patent applications
according to the International Patent Classification system (IPC).196
The Intellectual Patent Office of the UK (UKIPO) also uses

certain types of AI tools. The trademark pre-apply advice service helps
to identify existing and similar trademarks and to target the right groups
of goods and services for the proposed trademark. According to Pierre
Oliviere, the tool is being used about 250 times per day, thereby
enabling swifter examinations and better application quality. Patent
examiners in the UKIPO use a patent translate tool from the European
Patent Office. A machine learning patent application allocation tool
helps to distribute patent applications to the appropriate patent
examiner. This leads to time savings in the allocation process and, due
194
Workshop 3, https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/politische-
rechtliche-Gestaltung.html.
195
WIPO, https://www.wipo.int/about-ip/en/artificial_intelligence/search.jsp?techno
logy_id=&territory_id=154.
196
logy_id=&territory_id=400 & https://www.wipo.int/edocs/mdocs/globalinfra/en/wip
o_ip_itai_ge_18/wipo_ip_itai_ge_18_p16.pdf.

to the machine learning effect, the AI reportedly improved already from
60% to 80% accuracy. A project on AI-assisted patent prior art searches
has, however, been discontinued.197 Furthermore, the Office tested a
patent search tool (Derwent Innovation) that uses large amounts of plain
text as an input, based on a search in patent documents, but also in non-
patent literature. The tool permits the searcher to set weights to the
terms, which allows for a context-specific result ranking.198 As Oliviere
pointed out, however, the system still needs the involvement of humans
at the stages of input selection and result interpretation. Overall, the
UKIPO perceives a lot of potential in the use of AI to improve different
processes within the Office, such as automated text searches with NLP,
automated guidance and pre-apply services across all IPRs, or advanced
authentication and validation features to improve application qualities.
In this context, the UKIPO is working together with EPO on the further
development of AI search tools.199
The Swiss Intellectual Property Office (IPI) uses AI for

automating and reducing the administrative workload within the Office.
This includes decision-making, the creation of documents, but also real-
time fee and deadline management. Since 2018, the IPI trains a self-
learning AI system for the classification of documents and controls the
quality of the results with manual adjustments if needed.200
The European Patent Office (EPO) uses a tool to perform an

automated figure and image search for trademarks, patents and designs.
AI helps in the classification and allocation of patent applications to the
responding unit within the EPO, but also under the Cooperative Patent
Classification (CPC) scheme. Also, in the prior art search for patents
the EPO implemented solutions using machine learning. EPO has
developed its own measurement to determine the accuracy of the
automatic search tools. In the examination process, the EPO sees
potential for machine learning and AI support in the automatic detection
of problems and corresponding solutions regarding patent applications,
as well as in the automatic detection of non-patentability. As in almost
all other IPOS, EPO examiners use machined learning translation tools
for patent documents. The EPO has its own data science team which
develops tailor-made AI systems based on open-source software.201
197
Workshop 3, https://www.cipco.uzh.ch/de/veranstaltungen/IP-KI/politische-
rechtliche-Gestaltung.html.
198
WIPO. https://www.wipo.int/about-ip/en/artificial_intelligence/search.jsp?techno
199
UKIPO, https://www.gov.uk/government/news/ipos-first-ai-powered-tool-improv
es-quality-of-tm-applications.
200
201

VI. Outlook – Policy Recommendations
As mentioned above, the AI/IP Research Project’s next step is the

drafting of policy recommendations. The recommendations will mainly
address areas described in this paper and be tiered into an
implementation level, a study level and a system challenge level. The
implementation level addresses concrete steps that ought to be taken in
the near future, largely within the current IP law framework. This
turning of diagnosis into action also involves an element of
international cooperation between jurisdictions and their IP offices,
possibly even the working towards an international agreement. The
study level highlights topics on which research and inter-
/intradisciplinary discourse should intensify now because their as yet
insufficient clarification stands in the way of subsequent, incremental
AI/IP policy decisions. Finally, the system challenge recommendations
look at whether more fundamental steps might further an appropriate
AI/IP framework. We hope to contribute, by the recommendations, the
previous Project work, and a subsequent Project stage (including the
aforementioned intradisciplinary dialogue), to such a framework in a
manner that is both practical and foundational.

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Max Planck Institute for Innovation and Competition Research Paper No.

Peter Georg Picht, Valerie Brunner, Rena Schmid

Artificial Intelligence and Intellectual Property Law:

Electronic copy available at: https://ssrn.com/abstract=4122985

Artificial Intelligence and Intellectual Property Law:

Peter Georg Pichtii/Valerie Brunneriii/Rena Schmidiv

Abstract English: The use of “artificial intelligence” systems becomes

Abstract Deutsch: Der Einsatz von Systemen der „künstlichen

Electronic copy available at: https://ssrn.com/abstract=4122985

Keywords: Artificial Intelligence, Intellectual Property Law, AI, KI,

The interaction between “artificial intelligence” (AI) and intellectual

Electronic copy available at: https://ssrn.com/abstract=4122985

Against this background, Zurich University’s Center for Intellectual

II. The AI/IP Research Project

Initiated in 2021, the AI/IP Research Project aims at (i) gaining an

Applying a suitable methodology presents one of the Project’s

Electronic copy available at: https://ssrn.com/abstract=4122985

As the backbone of its activities from Q2/2021 until Q1/2022, the

 Dr Hansueli Stamm gave an overview on the current situation in

 The September 2021 workshop put the main emphasis on the

Electronic copy available at: https://ssrn.com/abstract=4122985

 The January 2022 workshop continued the technology and

The Project’s next step will be a conference, to be held in Zurich in June

III. Phenomenology: “AI”, Innovation, and the Marketplace

Especially given a certain element of hype and buzz-wording to the

Electronic copy available at: https://ssrn.com/abstract=4122985

Nonetheless, certain features are widely regarded as constitutive for AI

Electronic copy available at: https://ssrn.com/abstract=4122985

Intellectual property law comes into play with regard to AI system-

From the perspective of IPR typology, AI system innovation

Electronic copy available at: https://ssrn.com/abstract=4122985

b) Case Studies: Siemens, Novartis, IBM

For the manufacturing and infrastructure business of Siemens, AI is

Electronic copy available at: https://ssrn.com/abstract=4122985

In addition to a few further areas, IBM currently focuses its

Electronic copy available at: https://ssrn.com/abstract=4122985

IV. AI Creatorship – Protectability

Can IPR protection extend to intangible assets created not by a human

1. Patent Law – DABUS and beyond

Electronic copy available at: https://ssrn.com/abstract=4122985

Electronic copy available at: https://ssrn.com/abstract=4122985

In the litigation’s German prong, the Federal Patent Court of

As to the UK, the appeals to the UK High Court and Court of

Electronic copy available at: https://ssrn.com/abstract=4122985

In Australia, DABUS fared better. While the application was

South Africa’s Companies and Intellectual Property Commission

b. The EPO AI-Guidelines

The EPO Guidelines deal with AI in various sections, in particular

Electronic copy available at: https://ssrn.com/abstract=4122985

The explanations just given for mathematical methods also apply,

Terms such as "support vector machine", "reasoning engine" or

Electronic copy available at: https://ssrn.com/abstract=4122985

According to US practice, a key hurdle for AI patenting lies in the

The “Subject Matter Eligibility Test” examines the following

As a consequence of this test, abstract ideas (such as a

Electronic copy available at: https://ssrn.com/abstract=4122985

The UK Patent Office's Manual of Patent Practice has been updated

Electronic copy available at: https://ssrn.com/abstract=4122985

AI inventions may also constitute a mathematical method or

e. De Lege Ferenda Positions

Arguably a majority of patent law scholars is sceptical towards the

Electronic copy available at: https://ssrn.com/abstract=4122985

Although recognizing certain of these counter-arguments,72 some