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Ownership of inventions created by Artiﬁcial Intelligence
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FRANCESCO BANTERLE
Ownership of inventions created by Artificial Intelligence ()
SUMMARY – 1. Introduction – 1.1 The concept of Artificial Intelligence – 2. Ownership of arti-

ficial (computational) inventions - 3. The concept of invention – 3.1 … and its “concep-
tion” - 4. Ownership of inventions under the EPC and Italian patent law - 4.1 Ownership
of inventions in the employment context - 4.2 Ownership of inventions in contracted activ-
ities - 4.3 Ownership of computational inventions – 5. Inventorship (A human prerequi-
site?) - 5.1 Moral rights - 5.2 Designation of the inventor - 5.3 Can the designation of a
robot-inventor affect patent validity? - 6. Can robots be inventors? Possible solutions to
reconcile AI and patent ownership 7. Conclusion – Pros and cons in reshaping the concept
of ownership to adapt it to computational inventions.
1. The rise of Artificial intelligence (AI) leads to questioning the subjec-

tive/human status of the inventor/author. And therefore if, and to whom, the ob-
jects created by a robot can belong and even whether they can enjoy protection.
As long as AI technology needs human interaction, it will be considered something
like a computer-based invention-generation tool. But if AI technology advanced to
the extent that robot would be capable of inventing with no human contribution, it
should be determined how these inventions would be treated.
Ownership of the results obtained by machines through an automated process
is a topic debated since a long time. In 1974, the CONTU commission (Commis-
sion on New Technological Uses of Copyrighted Works) started studying the case
of granting copyright protection to computer-generated works. The Commission
concluded there was no need for a special treatment of computer-generated
works, since computers at that time had no enough computational power to gen-
erate autonomously results absent human intervention. Computers were therefore
considered as mere tools. Works created through the use of computers could be
protected only as individual creative works, and the author was deemed the com-
puter user. In fact, this solution comes close to the provision in UK and Irish cop-
yright laws that considers author of the computer-generated works the person
that made the necessary arrangements for the creation of that work (1). In 1985,
the OTA Commission criticized the conclusion of the CONTU Commission, as
too simplistic. And warned about the complexities in the determining the qualifi-
cation of the author in computer-generated works (2).
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() Questo scritto ha ricevuto un giudizio positivo di un referee.
(1) UK Copyright, Designs and Patents Act 1988, s 9(3): “In the case of a literary, dra-
matic, musical or artistic work which is computer-generated, the author shall be taken to be the
person by whom the arrangements necessary for the creation of the work are undertaken.” A
'computer-generated' work is defined as a work “generated by computer in circumstances such
that there is no human author of the work” (s 178). See for instance Nova Productions Ltd v
Mazooma Games Ltd & Ors Rev 1 [2006] EWHC 24 (Ch) at 104. The Irish Copyright and
Related Rights Act 2000, s 21(f) sets out a similar provision.
(2) U.S. Congress, Office of Technology Assessment, Intellectual Property Rights in an
Age of Electronics and Information, OTA-CIT-302 (Washington, DC: U.S. Government Print-
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LUIGI CARLO UBERTAZZI
No designation of robot-inventors appears to exist to date in patent registries.

Whilst the debate on computational authorship in copyright appears to be more
advanced (3), the latest version of the EPO patentability guidelines do not address
this aspect (4). In a recent seminar held by the EPO, however, it was concluded
that patent applications indicating a robot inventor should be deemed invalid
based on current rules (5). In the US, scholars concluded that US patent law
frames patentability and inventorship in terms of human creation. And the human
characterization of the inventor is preventing the US patent system from allowing
robots as inventors and thus patentability of AI’s inventions (6).
This paper analyses how patent ownership regime under Italian law (the Ital-
ian Civil Code is referred as “c.c.” and the Italian Industrial Property Code is re-
ferred as “c.p.i.”) and the European Patent Convention (“EPC”) can apply to AI’s
inventions. It concludes that the current system, at least in principle, is compatible
with computational inventions, although it does not allow their patentability due to
procedural reasons. Some changes should be made and particularly a shift from
an inventor-based system to an investment protection system (in terms of owner-
ship) is envisaged. A set of options to reconcile patent law and artificial inventors
are then explored.
1.1. There is no definition of AI. This concept should be addressed from a

holistic view, since it obtains a multitude of inputs from distinct perspectives: from
computer science to philosophy (7). Despite AI appears a recent topic, the term
⎯⎯⎯⎯
ing office, April 1986), stating: “If machines are in any sense co-creators, the rights of pro-
grammers and users of programs may not be easily determined within the present copyright
system” (at 72).
(3) US Copyright Office has clarified it will not accept applications for copyright registra-
tion of works crated by machines or animals, stating that ‘to qualify as a work of “authorship” a
work must be created by a human being’, quoting Supreme Court case Burrow-Giles Litho-
graphic Co, 111 U.S. at 58. See US Copyright Office, Compendium: Copyrightable Author-
ship: What Can Be Registered, 2017, available at: https://www.copyright.
gov/comp3/chap300/ch300-copyrightable-authorship.pdf (accessed 25 July 2018), p. 17.
(4) See EPO Guidelines for Examination, effective as of 1 November 2018. They regulate
AI-based patent applications (Part G. - 3.3.1 Artificial intelligence and machine learning). See
also SCHUSTER, Artificial Intelligence and Patent Ownership, forthcoming (2018).
(5) Patenting Artificial Intelligence, conference held at EPO Munich, Germany, 30 May
2018, available at: https://www.epo.org/learning-events/events/conferences/2018/ai2018.
html (accessed 31 July 2018).
(6) ABBOTT, I Think, Therefore I Invent: Creative Computers and the Future of Patent
Law, in B.C. L. REV. 2016, 57, 1079, 1080. DAVIES, An Evolutionary Step in Intellectual
Property Rights - Artificial Intelligence and Intellectual Property, Computer Law & Security
Review, 2011, 27, 601-619, at 601. WEF, Artificial Intelligence Collides with Patent Law,
2018, available at: https://www.weforum.org/whitepapers/artificial-intelligence-collides-with-
patent-law.
(7) See for example FLORIDI, Philosophy and Computing. An introduction, Routledge,
1999.
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“artificial intelligence” is all but new. In fact, it has been in use since the 50s (8).
AI originally related to computer science studies that were aiming at creating
computers able to mimic the human brain. These projects (named as “strong AI”)
were abandoned during the 80s due to their complexity. Computer science efforts
migrated towards a “light AI”, embracing a functional approach and focusing only
on certain functions of the human brain (9).
From an intellectual property perspective, the key-element should be the abil-
ity of AI to learn and generate autonomously outputs (computational creativity),
that may result in the generation of IP protectable subject matter (inventions, art
works, know-how, data sets), independently from any influence or contribution
that may affect the ownership regime, thus giving rise to real “computational in-
ventions”. With the present state, AI technology appears capable of (i) under-
standing unstructured data, (ii) computer reasoning, and (iii) learning automati-
cally, thus producing unexpected solutions developed independently from pro-
grammer's instructions. Often based on non-human logic. Yet, human ingenuity is
still necessary to define targets, parameters and success criteria, select the da-
tasets to be analyzed, train the machine, measure its output, correct errors, and
evaluate the results. This is why current technologies are sometimes referred as
“augmented intelligence” (10). In particular, from a patent law perspective, pro-
ducing inventions autonomously is often more complex than creating artistic con-
tents suitable of copyright protection. The inventive process requires identifying a
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(8) In 1950, Alan Turing published Computing Machinery and Intelligence, in Mind, New
Series, 1950, vol. 59, n. 236, 433 ss, where he started exploring the possibility of creating a
computer that mimics the human brain, up to having an intelligence without a body. In 1956
the computer scientist John McCarthy coined the term “artificial intelligence” during the Dart-
mouth Conference. See SMITH, MCGUIRE, HUANG, YANG, The History of Artificial Intelligence,
University of Washington, 2006, available at: https://courses.cs.washington.
edu/courses/csep590/06au/projects/history-ai.pdf (accessed 31 July 2018).
(9) SANTOSUOSSO, BOSCARATO, CAROLEO, Robot e diritto: una prima ricognizione, in La
nuova giurisprudenza civile commentata, 2012, 7-8, 2, 494 ff.
(10) For example, to date, one of the most advanced computational technology is IBM
Watson. Watson is not defined by IBM as an AI system, but rather an “augmented intelligence”
or “cognitive system”. Indeed, it offers a powerful computational system to analyse big datasets
or to make complex calculations. Watson applies logical deductions on human knowledge with
mining and machine learning systems applied to big data basins. Yet, it is not able to take fully
autonomous decisions: it can invent recipes based on large amount of information. However, it
needs instructions and human inputs. See IBM, The quest for AI creativity, available at
https://www.ibm.com/watson/advantage-reports/future-of-artificial-intelli-gence/ai-
creativity.html (accessed 31 July 2018). Thus, at least for the moment, Watson should be con-
sidered as a tool, in the user’s hands. At a first glance, results of Watson usage should belong to
the user that gives inputs and directs the machine towards a certain result. Alternatively, they
could belong to the developer of the tool that has programmed the machine to allow the execu-
tion of certain tasks. This depends on which party has given the decisive contribution. Contrac-
tual arrangement will more precisely reflect the actual contribution to the project development
and the ownership on the output.
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problem to be solved and applying technical teachings (11). In most cases, where
AI is not capable of carrying out the inventive process autonomously, we should
rather talk about “AI-assisted inventions”. Indeed, in the absence of full inventive
autonomy, robots should be considered as mere tools (with AI considered as a
performance) to support human creativity.
Yet, many argue that real AI systems have been existing since a long time.
They are systems based on artificial neural networks, i.e., mathematical methods
to create artificial neurons (12). They use data mining and deep learning systems
to combine information and then reproduce the same mechanisms that generate
ideas in the human mind (13). Commentators referred that some of the results
obtained with these systems have been already patented. However, the role of the
smart-system in the achievement of the invention was not disclosed, apparently
due to filing strategies and legal uncertainties (14).
2. Ownership of AI’s patentable inventions raises three main issues that are
questioning whether a human prerequisite in the patent system exists. The first
question is whether the concept of invention is compatible with computational in-
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(11) RAMALHO, Patentability of AI-Generated Inventions: Is a Reform of the Patent Sys-
tem Needed?, Institute of Intellectual Property, Foundation for Intellectual Property of Japan,
2018, available at: https://ssrn.com/abstract=3168703.
(12) THALER, Creativity Machine® Paradigm, in CARAYANNIS (ed.), Encyclopedia Of Cre-
ativity, Invention, Innovation, And Entrepreneurship, Dordrecht: Springer, 2013, 447-456, at
451; The Economist, From Not Working to Neural Networking, 2016 available at
http://www.economist.com/news/special-report/21700756-artificial-intelligence-boom-based-
old-idea-modern-twist-not (accessed: 28 July 2018).
Law, cit., refers about medicinal chemists compounds created integrally - or for the most part -
by computer systems. For example: (i) the patent on the cd. “Creativity machine” of 1994 (de-
vice for autonomous generation of useful information) by Dr. Thaler; and (ii) the “Genetic
Programming” software, which produced patentable results with minimal human intervention.
Generally, these AI systems are based on (i) processing of basic component information and
(ii) specification of desired results (measurement of performance such as voltage and frequen-
cy). The system then generates the most suitable result. On the other hand, there are currently
experimental research centres deploying scientific robots that integrate AI and laboratories with
physical robots that conduct experiments with minimal human intervention. In the chemical-
pharmaceutical field, technology might go towards autonomous discoveries, even beyond a hu-
man contribution. KING ET AL, The Robot Scientist Adam, Computer 2009, 42, 46-54, at 47;
KING, Functional Genomic Hypothesis Generation and Experimentation by a Robot Scientist,
in Nature, 2004, 247-252, at 247, 251. KOZA ET AL., Genetic programming III: Darwinian in-
vention and problem solving, 5 1999 mentioning that genetic programming automatically creat-
ed a computer program that is competitive with a human produced result; Keats, John Koza
Has Built an Invention Machine, in POPULAR SCI., 2006, May, at 66, 72 explaining how a a
genetic algorithm generated different circuit designs.
Law, cit., 1080. DAVIES, An Evolutionary Step in Intellectual Property Rights - Artificial Intelli-
gence and Intellectual Property, cit., 601.
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ventions. We should then consider that patent law provides two types of protec-
tion forming two distinct ownership regimes: economic exploitation rights and in-
ventorship. These two aspects are however highly connected: the general principle
is that the initial right to a patent belongs to the inventor. Hence, the second
question is if the current ownership regime is compatible with computational in-
ventions. The third question is whether robots can be inventors. And, if not,
whether this affects patentability and ownership of computational inventions.
3. Both the ECP and Italian patent law fail to define the concept of invention
(as common to many patent legislations) (15). Under Italian law, only the earlier
provision set out by article 2585 c.c. lists a series of examples of possible inven-
tions (16). Rather, patent legislation defines what is patentable invention in terms
of mandatory qualities/requisites, under an open norm: every invention, in all
technical fields (17), meeting these criteria can be patented. And contains a non-
exhaustive list of exemptions (i.e., what is not considered an invention or cannot
be patented – see Art. 45(2)(3) c.p.i., Art. 27 TRIPs) (18). The core element of a
patentable invention is the industrial nature (also referred by the EPO as “tech-
nical effect”) (19), that means the technical application of the discovered solution.
Adopting a definition where everything can be patentable invention except what is
excluded therefrom aims at keeping the concept of invention dynamic, to open it
up to new technological developments (20).
⎯⎯⎯⎯
(15) VAVER, Invention in Patent Law: A Review and a Modest Proposal , in International
Journal of Law and Information Technology, 2003, 11, 286-307, at 288.
(16) Art. 2585 c.c.: “Possono costituire oggetto di brevetto le nuove invenzioni atte ad
avere un'applicazione industriale, quali un metodo o un processo di lavorazione industriale, una
macchina, uno strumento, un utensile o un dispositivo meccanico, un prodotto o un risultato
industriale e l'applicazione tecnica di un principio scientifico, purché essa dia immediati risultati
industriali.”
(17) This specification was added in Art. 52(1) EPC in the version EPC2000, to adapt the
wording to Art. 27(1) TRIPs.
(18) In this regard, there is a distinction between abstract items - mere discoveries or sci-
entific theories (that shall remain in the public domain) and patentable inventions that must
show an industrial attitude (see Art. 45 c.p.i. and Art. 52 EPC), i.e., a concrete and a technical
character. See GIOV. GUGLIELMETTI, La brevettazione delle scoperte-invenzioni, in Riv. dir.
ind., 1999, I, p. 97 s.
(19) EPO, Guidelines for Examination, cit., Part G – Chapter II-1, 687. The EPO basical-
ly confirms that the definition of invention is based on the presence of technical character. In-
deed: “the basic test of whether there is an invention within the meaning of Art. 52 EPC is sep-
arate and distinct from the questions whether the subject-matter is susceptible of industrial ap-
plication, is new and involves an inventive step. Technical character should be assessed without
regard to the prior art (see T 1173/97, confirmed by G 3/08)”. “Technical character" means
that the invention must relate to a technical field (Rule 42(1)(a)), must be concerned with a
technical problem (Rule 42(1)(c)), and must have technical features in terms of which the mat-
ter for which protection is sought can be defined in the claim (Rule 43(1)).
(20) See in this sense DI CATALDO, I brevetti per invenzione e per modello di utilità. I dis-
egni e modelli., in Busnelli (ed.), Il Codice Civile – Commentario, 2012, 24, 108, stating that
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3.1. In the Italian tradition, “invention” is normally referred as a new original

idea of a solution to a technical problem (21), that is suitable for industrial appli-
cation. Patents are the only IP right that in principle covers ideas. In this sense,
the “conception” of the idea and of its technical application can play a role. In-
deed, although in the definition of invention the inventor is not a key-element, the
solution to the technical problem needs to be identified by somebody - that is
normally the inventor, thanks to a mental act (22). The inventor usually plays an
inventive role in either (i) defining the technical problem to be solved; and/or (ii)
perceiving the invention (i.e., as the solution to a technical problem) (23). The in-
vention must be “conscious” and with a specific technical goal that the inventor
identifies (24). Conceiving the solution is where creativity lies, and thus the inven-
tor’s contribution. Invention does not necessarily require that something is creat-
ed/invented: also discoveries of pre-existing materials or substances, as long as a
technical effect is identified, can be patentable invention (25). The conception of
the discovery and of its technical application is again crucial.
Designation of the inventor (and thus the conception of the invention) may be
difficult in case inventions are developed by research groups. In this case, a num-
ber of researchers can cooperate with different tasks and responsibilities, and ac-
tions over time; from the initial searches to development of the first industrial ap-
plication of the invention (26). In that case, only those that actively and materially
contributed to the conception of the invention can claim inventorship (i.e., with-
out their personal involvement the invention would not have been devised) (27),
⎯⎯⎯⎯
the problem is of functional nature: granting or denying access to patent can have negative or
positive effect on the development of a sector, and hence to the improvement of quality of our
life.
(21) LUZZATTO, Trattato generale delle privative industriali, Milano, 1914, vol. I, p. 175;
see also SENA, I diritti sulle invenzioni e sui modelli di utilità , Giuffré, 2011, 77, 82, ss., DI CA-
TALDO, I brevetti per invenzione e per modello di utilità. I disegni e modelli., cit., 104. In the
Italian case law, see Corte di Cassazione, 5 July 1984, n. 3932, in Giur. ann. dir. ind., 1984,
01709; Corte di Cassazione, 11 December 1999, n 13863, ivi, 1999, 3880; Corte di Cassazio-
ne, 9 September 2005, n. 17993, ivi, 2006, Rep. 1244.
(22) SOANS, Some absurd presumptions in patent cases , in Patent, trademark and copy-
right journal of research and education, 1966, 433 ff.
(23) See Stanelco Fibre Optics Ltd’s Applications [2005] RPC 15.
(24) FLORIDIA, Le invenzioni, in AUTERI, FLORIDIA, MANGINI, OLIVIERI, RICOLFI, SPADA,
“Diritto industriale, proprietà intellettuale e concorrenza”, Torino, V ed., 2016.
(25) GIOV. GUGLIELMETTI, La brevettazione delle scoperte-invenzioni, cit., 97.
(26) SENA, I diritti sulle invenzioni e sui modelli di utilità, cit. 409. For further details, see
L.C. UBERTAZZI, Profili soggettivi del brevetto, Giuffré, 1985, 233 ff.
(27) Inventive contribution shall be determined based on the inventive activity concretely
performed, and not based on formal roles of the people involved. This in principle excludes
people whose role is limited to perform instructions received, or roles of management and con-
trol of the activity. UBERTAZZI, Profili soggettivi del brevetto, cit. See also ABDUSSALAM, Identi-
fying ‘the invention’ in Inventorship Disputes, SCRIPTed 2014, 11:1, 38 available at:
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opposed to those that participated in the research activity with merely practical
tasks (28).
In light of this, in principle, the necessary participation of the inventor in
conceiving the invention is linked to a human origin of the invention, and appar-
ently it creates a barrier to the robot conceiving the invention. For example, in the
US tradition, the invention is the fruit of an intellectual activity that is a mental
operation of the inventor, the so-called mental act requirement (29). The US Pa-
tent Act does not require a particular threshold of human control or input in the
invention process for granting patent rights, but it frames the questions of inven-
torship and patentability in terms of human creation (invention should be “any-
thing under the sun that is made by man”) (30). Yet, neither Italian law, the EPC,
nor international agreements explicitly require an invention to be of human origin
(31). It happens however that caselaw and European scholars link the invention to
⎯⎯⎯⎯
http://script-ed.org/?p=1413, for a comparative analysis. Generally speaking this may include
those who: conceive the initial ideas defining the research which led to the invention; contribute
materially to the development of the invention; provide solutions to the problems; implement
the innovation solution; devise experiments or products forming the basis of the patent applica-
tion and requiring initiative to conceive and/or complete (for instance due to unexpected prac-
tical difficulties); interpret the data disclosed in the patent application and recognise the signifi-
cance of results. Conversely, the inventive activity does not normally include: advance hypothe-
sis; passively follow the instructions imparted; simply perform work tasks under instruction
(regardless of how much skill and effort this took), particularly if the work took no initiative
and required no modifications to carry out as instructed; perform routine tasks, executes re-
sults testing. Additionally, are normally excluded those that own the facilities used in the re-
search, published earlier relevant work, or contribute very generally to work; were supervisors
or project managers without contributing technically to the invention. See for example Italian
Supreme Court, 7 October 2016, No. 20239, relating the role of a Scientific Director of a re-
search project and the relevant examples of elements to confirm the active and material role in
the conception of the invention.
(28) DI CATALDO, I brevetti per invenzione e per modello di utilità. I disegni e modelli.,
cit., 187. See Court of Appeal of Milan, 23 December 1977, in Giur. Ann. Dir. Ind., 1978,
1025.
(29) SOANS, Some Absurd Presumptions in Patent Cases , cit., 438.
(30) Diamond v. Chakrabarty, 447 U.S. 303 (1980). See also WEF, Artificial Intelligence
Collides with Patent Law, cit., at 9. Inventorship bestows initial ownership of patent rights,
generally driven by public beliefs on the justness and importance of rewarding human effort and
stimulating human creativity. Under US patent law, an invention requires conception, which is
“the formation in the mind of the inventor, of a definite and permanent idea of the complete
and operative invention” where the “inventor” refers to an “individual”. The Federal Circuit has
consistently explained that “[t]o perform this mental act, inventors must be natural persons and
cannot be corporations or sovereigns”. The remainder of the Patent Act and laws are also re-
plete with references to human actions. Section 101 of the Patent Act, governing patentable
subject matter, focuses on “whoever” shall invent, and Section 102 on novelty prohibits the pa-
tenting of subject matter that “a person” did not invent. Further, the patent application process
requires an oath or a declaration from the inventor (i.e. an individual).
(31) FRASER, Computers as inventors/ legal and policy implications of artificial intelli-
gence on patent law, in Scripted, 2016 vol. 13, 324. VAVER, Invention in patent law, cit., 290.
8
human creativity. But this seems more linked to an inventor-centric tradition,

sometimes emphasizing the author's role in patent lawsuits, assuming that it is
human creativity that drives the inventive process (32).
Rather, the invention is defined by reference to its eligibility requirements. In
particular, for being patentable an invention must be new and original. “Novelty”
refers to the invention not being part of the state of the art – with no human char-
acterization. “Originality” means that the invention must involve an inventive step,
in that the invention is not obvious to a person skilled in the art. Here, the human
factor lies exclusively in the evaluation of the innovation and can be considered an
extrinsic element of the invention. This parameter will be probably affected by AI’s
inventions but apparently not in terms of ownership.
The originality requirement is very different than in copyright law as regards
human characterization. Under EU and Italian copyright laws, originality is de-
fined in terms of creativity and authorship - that means “personality” (as personal
contribution of the author): authorship is linked to the personal intellectual crea-
tion that shows the author’s personal touch (33). For obvious reasons, in copy-
right law there can be no evaluation on the artistic merit of the work (say, censor-
ship), and thus the key aspect is that the author made a choice that reflects his
personality. The concept of originality/inventive step in patent law significantly di-
verges. The invention must be innovative in that is not obvious to a person skilled
in the art. This is not linked to inventorship. The technical merit (in terms of non-
obviousness) (34) of the invention, not the author, is therefore where the re-
⎯⎯⎯⎯
(32) See for instance the German definition of invention referred by TILMAN, PLASSMAN,
Unified Patent Protection in Europe: A Commentary, Oxford, 2018, 975. They mention that
the German case law and teaching have developed a lowing definition of invention: “the essence
of invention lies in its creative and planned, direct or indirect use of controllable forces of na-
ture beyond the activity of human reasoning to directly effect a causally foreseen outcome”,
quoting Frasser and Ann, Patentrecht (7th edn. 2016), §11 I ff, p 128 ff. Similarly, in the Italian
caselaw, see Court of Parma, 8 September 2005, in Giur. Ann. Dir. Ind., Repertorio sistemati-
co 1997-2007, 422: “l'invenzione industriale si fonda sulla soluzione di un problema tecnico,
non ancora risolto, atta ad avere concrete realizzazioni nel campo industriale, tali da apportare
un progresso rispetto alla tecnica ed alle cognizioni preesistenti (novità estrinseca) e da espri-
mere un'attività creative dell'inventore, che non sia cioè semplice esecuzione di idee già note e
rientranti nella normale applicazione dei principi conosciuti prescindendosi dalla maggiore o
minore novità del risultato (novità estrinseca)”.
(33) CJEU, Football Association Premier League Ltd and Others v QC Leisure and Oth-
ers; and Karen Murphy v Media Protection Services Ltd, joined cases C-403/08 and C-
429/08, Judgment of 4 October 2011, ECR [2011] I-9083. Similarly, in the US, in Feist (Feist
Publications, Inc. v. Rural Telephone Service Company, Inc., 111 Sup. Ct. 1282 (1991) [499
U.S. 340 (1991)]), the US Court held that: “The compilation author typically chooses which
facts to include, in what order to place them, and how to arrange the collected data so that they
may be used effectively by readers. These choices as to selection and arrangement, so long as
they are made independently by the compiler and entail a minimal degree of creativity, are suffi-
ciently original”.
(34) The EPO Guidelines (Part G – Chapter VII-4) refer to the term obvious as some-
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quirement lies (35). In other words, it seems that, within the concept of invention,
the technical solution in terms of technological progress is more important than its
conception as mental act/intellectual creation. Thus, in principle there is room for
computational originality.
The concept of invention itself (in terms of what type of solution can be pro-
tected) is dynamic in that it evolves and grows to accommodate previously unfore-
seen issues raised by new technologies and contexts. “Computer-implemented in-
ventions” show this nature, as they forced the concept of invention to adapt to in-
clude a subject matter like software programs that is in principle excluded from
patentability. The resulting trend has been towards wider patentability (36). AI in
general could be a computer-generated invention. In light of the need of stimulat-
ing progress, I think in principle there is enough space to recognize “computa-
tional inventions”, where the invention is the outcome of an inventive process car-
ried out with the creative contribution of AI (37). This contribution should be in
terms of defining the problem and identifying the solution. And in the end, AI it-
self is expression of the human creativity that generated it.
In sum, the concept of invention has no necessary reference to a human con-
ception. It is instead linked to a functional goal, that is to allow patentability of any
new idea of solution of a technical problem. Thus, it appears that AI acting auton-
omously can in principle generate patentable inventions.
⎯⎯⎯⎯
thing that “does not go beyond the normal progress of technology”. In assessing the inventive-
ness the EPO follows the so-called problem-solution approach. It includes three main stages:
(i) determining the “closest prior art”, (ii) establishing the “objective technical problem” to be
solved, and (iii) considering whether or not the claimed invention, starting from the closest pri-
or art and the objective technical problem, would have been obvious to the skilled person.
(35) See for example, Corte di Cassazione, 6 marzo 1995, n. 2575, Giur. Ann. Dir. Ind.,
1995, n. 3194, “il requisito della novità intrinseca non postula un grado di creatività ed origina-
lità assolute, rispetto a precedenti cognizioni ed invenzioni, essendo sufficiente che esso si con-
cretizzi in un progresso delle idee, in un miglioramento della tecnica preesistente”.
(36) Whereas software as such is included in the lists of inventions excluded from patent-
ability, computer-generated inventions are generally patentable. There are two types of such in-
ventions: (i) those where the program results in an effect internal to the computer or to other
element of the computational system - these inventions typically govern a unit or component of
the computer (e.g., a program that organize the internal memory of the computer); and (ii)
those where the program cause an external technical effect, managing through the computer a
device or an industrial process that is external to the computer (a software that manages a med-
ical device). This resulted in an opening of the patent system to these new inventions. The diffi-
culties in this case were significant, so that the EU attempted to generate a common discipline,
with a proposal Directive on the patentability of computer-generated inventions
(COM(2002)92-C5- 2/2002-2002/0047), that has never been approved. RANIELI, Cronache in
tema di brevettabilità delle invenzioni software related con particolare riguardo al ruolo
dell’EPO e alla più recente giurisprudenza del Regno Unito, in Riv. dir. ind., 2009, I, p. 233 ss.
GIOV. GUGLIELMETTI, La proposta di direttiva sulla brevettazione delle invenzioni in materia di
software, in Riv. dir. ind., 2002, I, p. 438 ss.
(37) As regards computational inventions and uses, see OTTOLIA, Big data e innovazione
computazionale, Giappichelli, 2017.
10
4. Patent laws’ approach in regulating ownership of inventions is based on an

old-fashioned conception of research activity carried out by independent individu-
als (38). There are very few provisions on employees’ inventive activity and on
commissioned inventions (39).
As mentioned, the conception of the invention gives rise to two rights: to
claim inventorship (moral rights) and to obtain a patent (economic exploitation
rights) (40). The right to use the invention originates when the patent is applied
for and granted. Art. 63 c.p.i. and Art. 2588 c.c. stipulate the general principle
that the right to a patent belongs to the inventor or his successor in title. This
means that in principle the right to a patent initially belongs to the entity that per-
formed the creative/inventive activity, not to whom invested economically for the
research activity (41). And it follows a general principle where all fruits of intellec-
tual creation belong to its author. As we will see, the exception is that right to the
patent belongs to the employer for the invention obtained by the employee in the
employment context (42).
Italian case law has confirmed that the initial ownership of the invention be-
longs to who invented it, and that ownership of the invention on the employer re-
mains an exception. This approach has been lively criticized by scholars as it is
anachronistic for two main reasons: (i) it recalls a concept of the invention ob-
tained by a single inventor, thanks to his individual efforts and creativity. This sit-
uation is no longer common, as inventions are developed by research centres with
investments in terms of resources and tools. Various actors are indeed involved in
the promotion, organization, finance, project management, research, testing, etc.
(43); (ii) it comes from a conception where the creative/intellectual contribution
is higher than the economic investment (opposed to the modern research ap-
proach, that requires enormous investments) (44).
⎯⎯⎯⎯
(38) VANZETTI-DI CATALDO, Manuale di diritto industriale, Giuffrè, 2018, 417.
(39) In this last regard, see Art. 4 of Italian Law 81/2017 (see infra).
(40) The nature of the economic rights resulting from the invention per se is debated: (i)
right to a patent (if the patent registration is considered having legal validity (efficacia costitu-
tiva) granting effects on the right to exclusive protection), (ii) property right or ownership. See
SENA, I diritti sulle invenzioni e sui modelli di utilità, cit., 174, and OPPO, Creazione ed esclusi-
va nel diritto industriale, cit.
(41) FLORIDIA, “Il diritto al brevetto”, in AUTERI, FLORIDIA, MANGINI, OLIVIERI, RICOLFI,
SPADA, cit.
(42) See SENA, I diritti sulle invenzioni e sui modelli di utilità, cit., 169; and OTTOLIA, sub
art. 64 c.p.i., in L.C. UBERTAZZI (ed.), Commentario breve alle leggi su proprietà intellettuale e
concorrenza, CEDAM 2016, 416, saying that the exceptions to the general principle (i.e., that
the right to a patent belongs to the inventor) are so significant in the Italian system that they
challenge the fact that this principle should be the general rule.
(43) SENA, Ricerca e impresa, in “Impresa, ambiente e pubblica amministrazione”, Mila-
no, 1978, 293 ss.
(44) SENA, I diritti sulle invenzioni e sui modelli di utilità , cit. FLORIDIA, Il diritto al bre-
11
AIDA 2016
Yet, this approach is common to the TRIPs and to the EPC. Article 60 EPC
stipulates that the right to a patent belongs to the inventor or his successor in title.
And if the inventor is an employee, the right to the European patent shall be de-
termined in accordance with the laws of the State in which the employee is em-
ployed, or the law of the State where the employer has the place of business.
4.1. Art. 64 c.p.i. regulates the case of inventions made by employees. Appar-
ently as an exception to the general rule, the right to a patent initially belongs to
the employer when the invention is developed in the course of the performance or
fulfilment of an employment contract or relationship (45) (Art. 64(1) c.p.i. says:
“i diritti derivanti dall'invenzione stessa appartengono al datore di lavoro” - rights
resulting from the invention belong to the employer) (46). Under this discipline,
the patent system is giving prevalence to the economic investment in the R&D ac-
tivities rather than to the inventive activity of a single inventor (47).
⎯⎯⎯⎯
vetto, cit.
(45) In that event, there are two sub-cases: (i) if the employee’s inventive activity is already
specifically remunerated (art. 64(1) c.p.i. - so called service invention / invenzione di servizio),
i.e., if the employee is specifically employed to invent, the employee is granted only moral
rights; (ii) if not, the employee is entitled to receive an equitable reward, i.e., an additional re-
muneration that is proportionate to the circumstances (art. 64(2) c.p.i. – invenzione di azien-
da). If instead the invention is made outside the performance of employment tasks (e.g., outside
working hours, at home), but the invention falls within the field/sector of the enterprise activity
in which the inventor is employed, the right to a patent belongs to the employee, but the em-
ployer has a right of preemeption, limited in time (three months). It relates to the exclusive or
non-exclusive use of the invention or to the acquisition of the patent as well as the right to apply
for or acquire patents for the same invention in foreign countries, against payment of a royalty
or price (to be estimated also based on the value of such assistance as the inventor may have re-
ceived from the employer in the development of the invention - Art. 64(3) c.p.i - invenzione oc-
casionale).
This is a rule typical of the Italian system. In other countries, patent laws tend to recognize
an award to the employees. See. DI CATALDO, I brevetti per invenzione e per modello di utilità.,
cit., 232.
(46) This principle is undisputed; see in the Italian case law, ex multis, Court of Milan, 25
May 1970, in Mon. trib., 1971, 942; Court of Appeal of Milan, 13 ottobre1972, in Giur. ann.
dir. ind.,1972, 11, 184; Corte di Cassazione, 16 January 1979, n. 329, in Riv. dir. ind., 1980,
II, 268 ss.; Corte di Cassazione, 23 April 1979, n. 2276, ivi, 1979, II, 553; Court of Naples, 30
July 1984, in Riv. it. dir. lav., 1986, II, 232; Corte di Cassazione, 21 July 1998, n. 7161, in
Giur. ann. dir. ind., 3867; Corte di Cassazione, 19 July 2003, n. 11305, ivi, 4485; Court of
Rome, 4 April 2007, in Sez. Spec., 2008, 1, 245 (“si attribuisce al datore di lavoro la titolarità
originaria dei diritti patrimoniali derivanti dal trovato ed all'inventore ”); Corte di Cassazione, 7
October 2016, n. 20239 (“il diritto del lavoratore al premio […] non può essere assimilato alla
proprietà intellettuale che spetta, a titolo originario, al datore di lavoro”). Some commentators
argue however that the initial ownership still belongs to the inventor/employee and it is directly
and automatically assigned to the employer (see OTTOLIA, sub art. 64 c.p.i., cit., 419). In the
US, the initial right to a patent belong necessarily to the inventor, that is the entity that shall file
the application. See SENA, I diritti sulle invenzioni e sui modelli di utilità , cit., 170.
(47) Ibid., at 243. LIBERTINI, I centri di ricerca e le invenzioni dei dipendenti nel codice
12
4.2. Complexity of modern research projects often requires engaging with ex-
ternal actors, setting up a number of relationships. This normally happens when
dealing with independent workers and more in general in commissioned research
activity. This complexity can affect the patent ownership regime, granting owner-
ship of the invention to an entity different from the inventor, as occurs within the
employment context. And, as mentioned, it is not specifically regulated by patent
law.
Based on the most agreed opinion, in case the inventor is not an employee but
an independent contractor, and the inventive activity is commissioned under an
agreement, in the absence of any contractual regulation, ownership or rights
should belong to the entity that is entrusting such activity (48). This comes from
the general principle under Italian law that the contracting party directly and au-
tomatically acquires the rights on the commissioned work. It is however doubtful
whether the initial ownership vests in the inventor rather than in the contracting
party. Under a general principle in Italian contract law (contratti di appalto), the
initial ownership of the results of the commissioned activity vests in the contract-
ing party (49). A similar mechanism is provided for the sale of a res futura (50).
The same rationale can be applicable by way of analogical interpretation of the
ownership regime set out by Art. 64(1) c.p.i. in relation to inventions made by au-
tonomous workers (if the invention is performed in the course of a contract). In-
⎯⎯⎯⎯
della proprietà industriale, in Riv. dir. ind. 2006, pag. 49; MANSANI, Invenzioni dei dipendenti
(art. 64 c.p.i.), in www.associazionepreite.it/scritti/mansani001.php; ID., Invenzioni dei dipen-
denti e comunione: modifiche discutibili che complicano le cose, in Il diritto industriale, 2010,
525.
(48) See DI CATALDO, I brevetti per invenzione e per modello di utilità, cit., 232. See also
FRANCESCHELLI, Lavoro autonomo, lavoro subordinato ed invenzioni di servizio, cit., GRECO E
VERCELLONE, Le invenzioni e i modelli industriali, cit., 253; OPPO, Creazione intellettuale,
creazione industriale e diritti di utilizzazione economica, cit., 1. UBERTAZZI, Profili soggettivi
del brevetto, cit., 36 ss. Italian case law on this aspect is relatively limited. In this sense see
Court of Milan, 25 May 1970, in Mon.trib., 1971, 942; Court of Appeal of Millan, 13 October
1972, in Giur. ann. dir. ind., 184/2; Court of Turin, 22 January 1979, in Giur. ann. dir. ind.,
1979, n. 1161 Court of Bologna,17 September 1982, ivi, 1982, n. 1568, confirmed by Bologna
Court of Appeal, 28 December 1984, ivi, 1984, n. 1823; Court of Vicenza, 21 May 2002, ivi,
4436. In relation to design, Corte di Cassazione (Italian Supreme Court), 23 October 1979, n.
5527, ivi, 1979, n. 1144. In relation to copyright, Court of Milan, 19 February 2010, in AIDA,
2010, 1378; Court of Milan, 24 April 1992, in IDA, 1993, 273; and similarly, Corte di Cassa-
zione, 23 December 1982, n.7109, in Giust. Civ. Mass., 1982, fasc. 12. But see the opposed
case law infra note 53.
(49) DI CATALDO, I brevetti per invenzione e per modello di utilità. I disegni e modelli,
cit., 244.
(50) Where the ownership is automatically and initially acquired by the contractor as soon
as the good is created (1472 c.c.). See SANDRI, I contratti di licenza in Italia, in Riv. dir. ind., 1,
1996, 43.
13
AIDA 2016
deed, this has been recently confirmed by a special labour legislation (51). A simi-
lar regime is also provided by Art. 65 c.p.i. for inventions made by universities fi-
nanced by private entities (52). Thus, the above is confirming that the scheme of
Art. 64(1) c.p.i. is a general regime applicable to commissioned inventions (53),
and results in the separation between ownership and inventorship (54).
⎯⎯⎯⎯
(51) See Art. 4 of Italian Law 81/2017: “Apporti originali e invenzioni del lavoratore - 1.
Salvo il caso in cui l'attività inventiva sia prevista come oggetto del contratto di lavoro e a tale
scopo compensata, i diritti di utilizzazione economica relativi ad apporti originali e a invenzioni
realizzati nell'esecuzione del contratto stesso spettano al lavoratore autonomo, secondo le di-
sposizioni di cui alla legge 22 aprile 1941, n. 633, e al codice della proprietà industriale, di cui
al decreto legislativo 10 febbraio 2005, n. 30”.
(52) Whilst for university researchers the general rule is that the initial ownership on the
inventions belongs to them, in case of R&D activities financed by private entities the initial
ownership vests in the contracting party. See L.C. UBERTAZZI, Le invenzioni dei ricercatori
universitari, in Contratto e impresa/Europa, 2003, 1109-1122.
(53) See DI CATALDO, I brevetti per invenzione e per modello di utilità. I disegni e model-
li., cit., 244; SENA, I diritti sulle invenzioni e sui modelli di utilità, cit., p. 199 ss.; L.C. UBER-
TAZZI, L’appartenenza dei risultati creativi dei dipendenti , in Aida 2010, 516, e ID., Profili sog-
gettivi, cit., 38. GRECO E VERCELLONE, Le invenzioni e i modelli industriali , cit., 210. LIBERTI-
NI, I centri di ricerca e le invenzioni dei dipendenti nel codice della proprietà industriale, cit.
Against this view, see in the Italian case law Corte di Cassazione, 7 October 2016, n. 20239;
Corte di Cassazione 21 July 1998, n. 7161, in Giur. ann. dir. ind., 3867, and Corte di Cassa-
zione, 19 July 2003, n. 11305, ivi, 4485, stating that the rule granting to the employer initial
ownership of the economic rights of the inventions created by employees should be deemed an
exceptional rather than a general rule.
(54) In more general terms, it is possible arguing that, whilst in principle intellectual crea-
tion should result in the assignment of the ownership on the outcome of the inventive activity to
the author, in light of the complex framework that is necessary for developing new research ac-
tivity in the interest of the entity that invest financial resources in that activity, it is possible to
grant directly to a party that is different from the author rights on the invention. Sena, I diritti
sulle invenzioni e sui modelli di utilità , cit., 175, quoting OPPO, Creazione intellettuale, creazio-
ne industriale e diritti di utilizzazione economica , in Riv. dir. civ., 1969, I, 1 ss., spec. 4 ss.: “sa-
rebbe invero erroneo indurre senz’altro dalla stessa rivalutazione del lavoro creativo come tito-
lo, accennata dall’inizio, la conclusione che la creazione intellettuale nasca nella giuridica appar-
tenenza all’autore anche quando sia posta in essere nell’esecuzione di un’attività di lavoro intel-
lettuale, prestata in un rapporto con altri che sia idoneo a spostare l’acquisto del risultato nella
sfera giuridica altrui. Con ciò si ipotizzerebbe, non solo che la creazione sia titolo
dell’attribuzione del diritto (anche) patrimoniale, ma che sia titolo, per così dire, indisponibile,
o non preventivamente disponibile, anche nei suoi effetti patrimoniali: non disponibile cioè
neanche attraverso meccanismi giuridici che siano tipicamente idonei ad attribuire direttamente
ad altri il diritto sul risultato di lavoro ”. Traditionally the attribution of ownership to a third
party was the result of an (even implicit) assignment, since the creation should initially vest in
its author and the assignment is always linked to a relationship between the parties. The ques-
tion was solved in the sense that attribution of ownership shall not always be the result of an as-
signment. OPPO, Creazione intellettuale, creazione industriale e diritti di utilizzazione economi-
ca, cit., 8. Conversely, it is possible that ownership is directly attributed to the contracting party
due to the contract relationship. This is because, both ownership situations (the ownership due
to the creative act of the inventor, or the ownership due to the organizational efforts of the con-
tractor) are expression of the same – more general – rule that is inspiring the patent system:
14
The title of acquiring the ownership on the invention is therefore the invest-
ment and the taking of economic risks of the research activity. Reference to the
investments and the financial risk of the research borne by the contracting party,
entails that: (i) the invention made during the commissioned activity that aims at
solving a technical problem through the conception of an invention belongs to the
contracting party; and (ii) also the invention made during the performance of a
research activity financed by the contracting party with no reference to the specif-
ic outcome or invention belongs to the contracting party, as long as the financed
activity is of inventive nature. This rule instead does not apply if the invention is
not specifically falling within the scope of the agreement. Thus, it is not applicable
to inventions developed by independent contractors based on activities that are
falling out of the scope of the agreement or based on an entrusted activity that
was not considered inventive.
Finally, similar rules apply if the invention is made by an equipe of inventors
(55).
4.3. Apparently machine-generated inventions are not compatible with the

general ownership principle in patent law: robots and machines lack a legal status,
and they could not be the initial owners of the invention. As we said, however, this
should be a mere hypothetical situation, where robots act autonomously as inde-
pendent inventors.
More likely, AI systems or robots will be owned by an organization (that cre-
ated or purchased the robot) and/or used in commissioned activities. As AI-
based-product market will expand, it will be necessary to see how contractual rela-
tionship with the robots or smart tools will be defined. However, it is possible
⎯⎯⎯⎯
ownership depends on the investments in the research activity in terms of costs and economy
risks. SENA, I diritti sulle invenzioni e sui modelli di utilità , cit., 201. Contra see GRECO E VER-
CELLONE, Le invenzioni e i modelli industriali , cit., 253 ss, stating that the contracting party
should get only ownership of the results of the activity specifically entrusted and remunerated,
excluding the rights on the inventions that occasionally the performing party can made, if the
activity entrusted was not the development of the invention or was not considered an inventive
activity.
(55) Art. 6 c.p.i. contains a general discipline in case the IP rights belong to more than one
person. Where there are a number of inventors, patent rights are subject to the general Civil
Code regime for joint-ownership (comunione). Art. 59 EPC is more limited and states only that
a patent application can be in the name of multiple joint-applicants. There are cases, however,
where the invention is the outcome of the research of a group of people, and the activity of the
single researcher is not separable. In that case it would be difficult to identify even one single
inventor, the right to patent belong in any case to the employer. The same applies to commis-
sioned research. Indeed, normally, research by group of inventors is organized and financed by
a different entity, that will be granted with the ownership of the invention. If instead the inven-
tion is the contribution of a number of inventors, that are not employed nor contracted with this
specific purpose, the right to a patent will follow the general civil code joint-ownership rules.
See UBERTAZZI, Profili soggettivi del brevetto, cit., 29 e 233. See also Court of Appeal of Mi-
lan, 23 December 1977, in Giur. ann. dir. ind., 1225.
15
AIDA 2016
considering how default rules would apply. Currently, in research project based
also on AI technology, a contracting party is often hiring an AI research centre or
AI developing firm to develop a particular solution. Then the research is carried
out by the AI technology developer with the cooperation of the contracting party’s
team. Alternatively, an AI technology can be licensed for a particular use to the
contracting party’s team. In these cases, the ownership regime of commissioned
activities illustrated above would likely be applicable: where AI is engaged for an
inventive purpose, the initial ownership of the inventive results vests with the con-
tracting party.
Defining the ownership regime in case of purchase of a robot, for example of
cognitive robots (56), or similar AI tools, might be more challenging. Robots are
particularly advanced hardware with AI software installed – i.e., very similar to a
computer and in fact they are a product. The default rule should be that robot's
inventions belong to its programmer (or its assignees). As AI is basically a piece of
software, any outcome, if protectable, should belong to the programmer that de-
signed the software for producing that result (unless a different contribution is
given by a third party, i.e., the user) (57). This comes at least from general civil
law property rules (58). However, the robot, as a tool, once purchased by, or
leased to, a third party becomes an internal asset of that organization. If the robot
were granted with the inventor status, it could be equated to an internal resource,
like an employee. Where the robot is specifically designed and purchased for in-
ventive tasks (59) its inventive activity should fall under the general rule of Art.
64(1) c.p.i. In that case, patent rights would belong to the AI user. In more gen-
eral terms, the outcome of the inventive activity of a robot would belong to the en-
tity that purchases it specifically for that purpose.
In contrast, it is doubtful whether, if the robot was purchased for non-
inventive tasks, e.g., supporting the business or engineering processes, but had
created a patentable process, this should follow the same reasoning. In principle,
patent rights would belong to the programmer, as AI had not been purchased spe-
⎯⎯⎯⎯
(56) The European Robotics Technology Platform defines cognitive robot as autonomous
robots that work with processes similar to the human cognitive ones. They are capable of intel-
ligent behaviour, they can reason, plan and learn. See SANTOSUOSSO, BOSCARATO, CAROLEO,
Robot e diritto: una prima ricognizione, in La nuova giurisprudenza civile commentata, cit.,
500.
(57) This conclusion is different in copyright law: since a human contribution is neces-
sary for copyright protection, results coming from a software absent human contribution could
not be protected and would in principle enter the public domain.
(58) Art. 821 and 822 c.c. provide that all fruits (in terms of profits and positive results
coming from a good, irrespective of a human contribution) belong to the owner of the good.
(59) See PEARLMAN, Recognizing Artificial Intelligence (AI) as Authors and Inventors Un-
der U.S. Intellectual Property Law, in RICH.J. L. & TECH. 24, 2, 2018, taking a similar ap-
proach based on US law, and the “hired to invent” doctrine. See for example Teets v. Chromal-
ly Gas Turbine Corp., 83 F. 3d 403, 407 (Fed. Cir. 1996).
16
cifically to create (60). Similarly, the rule of Art. 64(2) c.p.i. (patent rights could
go to the employer, but the employee - not specifically hired to invent - would be
entitled a fair reward) should not apply, as it derives from a general labor law
principle that all results of employee activity belong to the employer (61). Yet, this
rule is protecting research investment rather than the employees' position (62).
Thus, its application may still be justified where the inventive process carried out
by the robot has occurred thanks to the AI user's investments in preparing the en-
vironment in which the invention is born (63), i.e. taking advantage of the AI us-
er's organization and resources (e.g., data sets, trainings, tests, research tools, re-
search group, etc.). Hence, if the robot or AI tool is used as an internal resource
by an organization in an inventive activity, similarly to an employee, the invest-
ments in purchasing the robot (although with no initial inventive purpose) and
supporting its inventive activity may play a role, and be coherent with the rule set
out by Art. 64(2) c.p.i. Apparently, it remains however a residual hypothesis, to be
tested with development of AI market.
In sum, initial ownership of the robot-generated inventions would belong to
(i) the programmer of the robot (or its assignees), or (ii) the contracting party
(the user). This solution should reflect the general principle that ownership in re-
search activity should vest with the party that have invested in it. Therefore, the
party that invested in acquiring a robot or engaging its developer to use the robot
in a research project should be the initial owner of the results developed by it.
In conclusion, the existing patent ownership rules do not seem a real obstacle
to AI's inventions. This interpretation follows Italian law, however, whilst the EPC
is not regulating this aspect. Hence, it is possible that States' legislations deviate
from these principles (64). In this event, in case the initial ownership would be
granted to the inventor, ownership of patent in case of computational inventions
⎯⎯⎯⎯
(60) This will in fact depend on the level of control that the programmer maintains on its
products. For instance, if the robot programmer will be able to recognize any inventive outcome
of its products once sold to third parties.
(61) UBERTAZZI, L'appartenenza dei risultati creativi dei dipendenti, cit., 516.
(62) MANSANI, Invenzioni dei dipendenti (art. 64 c.p.i.), cit., 4.
(63) VANZETTI-DI CATALDO, Manuale di diritto industriale, cit., 423.
(64) For example, as it was highlighted during the DSM Copyright Directive Proposal,
ownership of material resulting from commissioned activity can be subject to different regula-
tion. See the recent DSM Directive proposal of the European Commission, in relation to intro-
duction of a new ancillary right for press publisher, was coming from the fact that in a number
of EU Member States, publishers are not acquiring rights on the newspaper articles based on
contract law and the rules mentioned above for commissioned activities. The principle under
which exploitation rights on the contents created in the employment context or within a com-
missioned activity appears to exist in: Italy, Denmark, Spain, Ireland, Netherlands, Poland, and
UK. See European Commission, Commission Staff Working Document - Impact Assessment
On The Modernisation Of Eu Copyright Rules - Part 2, Bruxelles 14 settembre 2016,
SWD(2016) 302 final, 190-192. For a comparative analysis see also WOLK, EU Intellectual
Property Law and Ownership in Employment Relationships, in Scandinavian Studies in Law
2010.
17
AIDA 2016
would not be possible, as robots do not have legal status, and cannot hold rights,
particularly property or similar entitlements.
5. Traditionally, the inventor is the natural person whose creative act is cred-
ited with the invention (65). He has the initial right to obtain a patent on the in-
vention and to be designated as the author (inventorship) (66). There is no defini-
tion of “inventor” in the EPC and in Italian law, however.
It is possible to recognize some clues that would confirm a human characteri-
zation of the inventor. Article 60 EPC stipulates that if two or more persons made
an invention independently of each other, the ownership is subject to a first to file
principle. Art. 119 c.p.i. regulates the case of wrong designation of the inventor.
And requires a confirmation of the person that was initially indicated as inventor.
Similarly, Art. 185 c.p.i. says that each patent title shall include the first and last
name of the inventor. Considering other sub-sectors, in plant varieties, the inven-
tor (defined as the maker) is (i) the person who created or discovered and imple-
mented the variety; or (ii) the person that is the employer of the person referred
above (Art. 101 c.p.i.). Hence, it appears that the inventor is again a person.
5.1 This human characterization is further confirmed by the fact that the in-
ventor is granted moral rights. Art. 62 and 64 c.p.i., Art. 62 and 81 EPC, Art.
2589-2590 c.c., and Art. 4ter CUP (recalled by Art. 2(1) TRIPs) say that the in-
ventor has the right to be mentioned as the author of the invention. The right to
be mentioned as inventor is applicable also in case the application is filed by a
third party (as in the case of employees – art. 2590 c.c. and 64 c.p.i.) or by a suc-
cessor in title of the inventor. This is also applicable in all cases where inventor-
ship is attributed to third parties.
Moral rights are indeed designed to protect the inventor: as mentioned, right
to a patent as well as the other patent rights can be transferred - moral rights
cannot (Art. 63 c.p.i. - Art. 2589 c.c.). Additionally, it is traditionally accepted
that moral rights and inventorship are independent from the right to a patent and
from the patentability of the invention itself (67).
Under Italian law, moral rights can be enforced by the inventor and after his
⎯⎯⎯⎯
(65) TILMAN, PLASSMAN, Unified Patent Protection in Europe: A Commentary, cit., 1005.
(66) SHUSTER, cit., quoting C.R. Bard, Inc. v. M3 Sys., 157 F.3d 1340, 1352 (Fed. Cir.
1998).
(67) UBERTAZZI, Profili soggettivi del brevetto, cit., 214-215; FLORIDIA, cit.; SENA, Il con-
tenuto del cosiddetto diritto morale dell’inventore, in Riv. dir. ind., 1959, II, 59; BERGIA, Sub
art. 62 – diritto morale, in VANZETTI (ed.), Codice della proprietà industriale, Giuffrè, 2013,
765. It was debated whether the inventor should necessarily participate in any actions to protect
the patent. Art. 122(4) c.p.i. excludes this necessity. On the contrary, is doubtful whether the
inventor is entitled to take action for revoking a patent on the same subject matter obtained by a
third party. A similar entitlement should be in line with protection of moral rights. See SENA, I
diritti sulle invenzioni e sui modelli di utilità, cit., 409.
18
death, they may be claimed by the spouse or by descendants to the second degree.
In the absence, or after the death, of such persons, they may be claimed by the
parents and other ascendants, and in their absence, or after their death, by rela-
tives to the fourth degree (Art. 62 c.p.i.). This is further confirming the human
characterization of these rights.
From an ontological perspective, this moral right is defined as a personality
right (68). It can belong only to individuals and not to legal persons (69). This
should come from the fact that this right is depending on the conception of the
invention, that can be made only by the individual/inventor, or group of inventors
(70), as conception is “physically” linked to the intellectual creation.
We can therefore conclude from this that inventorship is therefore not com-
patible with robot-inventors. Yet, the consequences of a possible designation of a
robot-inventor are doubtful.
5.2. The general principle is that both the patent application and the patent ti-
tle shall include the designation of the inventor (art. 160, 185(2)d c.p.i. and Art.
81 EPC). This is the consequence of the right of the inventor to be mentioned vis-
à-vis the applicant or proprietor of the patent (71).
The patent office is not checking the exact mention of the inventor (Art. 119
c.p.i. and Rule 19(2) EPC), however. If the applicant is not the inventor or is not
the sole inventor, the EPO communicates to the designated inventor the infor-
mation in the document designating him (Rule 19 EPC). Rule 60 EPC stipulates
that the application is refused (based on Art. 90(5) EPC) if the designation of the
inventor is absent or deficient so that it cannot be considered as validly filed and
the applicant does not remedy within 16 months from the filing (or priority) date
(72).
As regards the mention of the inventor, Art. 119 c.p.i. (and similarly Rule
21(1) EPC) stipulates that it is possible to request to amend the inventor designa-
tion, but this should come with a confirmation from the inventor previously desig-
nated. Absent this declaration, a court decision is needed (119(3) c.p.i.).
⎯⎯⎯⎯
(68) SANTINI, I diritti della personalità nel diritto industriale, Padova 1959, 85 ss.
(69) TILMAN, PLASSMAN, Unified Patent Protection in Europe: A Commentary, cit., 1005;
BERGIA, Sub art. 62, cit., 765; UBERTAZZI, Profili soggettivi del brevetto, cit., 233. See also
Court of Milan, 15 May 1997, in Giur. Ann dir. Ind., 1999, 186: “poiché il fatto costitutivo del
diritto morale di paternità dell'invenzione […] risiede per definizione nell'attività creativa uma-
na, la capacità giuridica di essere soggetto di tale diritto non può essere riconosciuta a persone
diverse dalla personal fisica”. On the opposite view, see Court of Milan, 17 December 1972,
Riv. dir. ind., 1973, II, 44.
(70) SENA, I diritti sulle invenzioni e sui modelli di utilità, cit., 408. UBERTAZZI, Profili
soggettivi del brevetto, cit., 233.
(71) The EPC adds that if the applicant is not the inventor or is not the sole inventor, the
designation shall contain a statement indicating the origin of the right to the European patent.
(72) EPO, Guidelines for Examination in the EPO, cit., Part A. Chapter III-7.
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5.3. It must be determined whether the missing or wrong designation of the

inventor can result in the revocation of the patent. Art 76(1) c.p.i. lists the cases
of revocation of a patent, that are considered an exhaustive list, under a numerus
clausus rule. Art. 138 EPC is in fact matching it, and it refers to the cases of inva-
lidity under States’ legislation. One of the cases relates the event that the proprie-
tor of the patent is not entitled, and the entitled inventor has not asked the assig-
nation of the patent. This provision is however linked to exploitation rights on the
patent, not to moral rights (73). The same applies in case of usurpation (74).
Considering that correction to the designation of the inventor can be done al-
so after the registration of the patent (art. 119(3) c.p.i. and EPC Rule 21(1)), it
can be concluded that the wrong indication of the inventor is not falling within the
cases of revocation of the patent. The absent or wrong designation of the inventor
appears to be considered only a fault in the patent filing administrative process,
that however does not affect validity of the patent (75).
This is also in light with inventorship nature. Moral rights in patent law enjoy
a lower level of protection than in copyright law (76), as inventorship is less cen-
tral in the patent system. Indeed, the inventor can waive his right and ask the of-
fice to avoid his designation (77). For this reason, copyright rules on moral rights
should not be subject of analogic interpretation (78).
In conclusion, if we consider that the inventor is a natural person, the desig-
nation of a robot would be formally invalid. In this case, the EPO can likely ask to
amend the designation indicating a valid inventor. If this does not happen, the ap-
plication is refused. If, however, the Office does not rise this issue, the indication
of the robot as author can be done without affecting the patent validity.
⎯⎯⎯⎯
(73) SENA, I diritti sulle invenzioni e sui modelli di utilità, cit., 410.
(74) Art. 118 c.p.i. and Art. 61 EPC regulate the remedies in case the patent is filed and
obtained by a non-entitled person. This could also be the case when there was an internal
agreement with the inventors that was preventing the application from being filed. The entitled
person can ask that the patent application is rejected or, if already granted, the patent is de-
clared invalid.
(75) SENA, I diritti sulle invenzioni e sui modelli di utilità , cit. 410. DI CATALDO, I brevetti
per invenzione e per modello di utilità. I disegni e modelli, cit. Contra: UBERTAZZI, Profili sog-
gettivi del brevetto, cit.
(76) BERGIA, Sub art. 62, cit., 766; VANZETTI-DI CATALDO, cit., 418. In particular, patent
moral rights do not grant the inventor any power to implement the invention, to object any de-
formation or modification of the work that may jeopardize his/her reputation (Art. 2577 c.c.
and Art. 20 of the Italian Copyright Act – Law 633/1941), nor to retire the work from the mar-
ket (see Art. 2582 c.c. and Artt. 20, 129 and 142 of the Italian Copyright Act).
(77) Rules 20(1), 143(1)g, 144, and Art. 129(1) EPC, stipulate that the inventor designat-
ed by the applicant may address to the EPO a written waiver of his right to be mentioned as in-
ventor in the published European patent application. In this case, his name is not mentioned, in
the application and in the patent title.
(78) SENA, I diritti sulle invenzioni e sui modelli di utilità, cit., 410.
20
6. We concluded in the previous paragraphs that (i) there is not necessarily a

human prerequisite in the concept of patentable invention; (ii) computational in-
ventions are mostly compatible with the current patent ownership regime, as own-
ership is not necessarily framed with an initial entitlement of the right to a patent
in favour of the inventor where a superior right exist (employer / contractor); (iii)
although the inventor is usually defined in terms of natural person, a wrong desig-
nation (e.g., by mentioning the robot) is not affecting the validity of the patent;
however, (iv) it will be likely considered a deficient designation of the inventor
that would cause the patent office to require the applicant to rectify it - otherwise
the patent application will be refused.
As already mentioned, in copyright law, at the current state, a human-
oriented policy seems to exclude protection of computer-generated works, based
on the need of “retaining this human-centered notion of authorship and authors’
rights” (79). Yet, this argument does not seem applicable to patent law: excluding
computational inventions from patentability could chill technological development,
as AI will be the future of innovation in many technical sectors. And progress shall
be regarded as the ultimate goal of patent law (80). Indeed, it is important giving
incentives to avoid that computational inventions are exploited under the regime
of secrecy, as trade secrets, and to expand the state of the art identifying compu-
tational inventions. To this aim, a number of alternative solutions can be consid-
ered to allocate inventorship and ownership, in most cases by way of interpreta-
tion without necessarily amend the current state of the law. This must however
depend on a clear policy-choice as regards human centrality in the patent system.
(i) Leave inventions to human creativity by considering AI as a mere tool. To
date, computers and robots work as mere tools. Even if AI (or augmented intelli-
gence) contributes significantly to the inventive process, it does not necessarily
play a substantial role in conceiving the invention. AI systems and robots need in-
puts from humans for generating a creative output. This human input can identify
the inventor if it has a causal effect in the inventive process, particularly if it is
conditioning the inventive process by giving adequate instructions. In this sense,
human can be still the inventor if he asks AI to solve a problem and if it is likely
that AI will reach that result. In fact, in current AI systems, inventorship would
generally arise from successfully designing and applying a machine learning sys-
tem on the path to achieving an inventive outcome, thus resulting in “AI-assisted”
inventions rather than real computational inventions. Yet, even if the robot were to
autonomously be governing the inventive process, it could be still qualified as a
⎯⎯⎯⎯
(79) GINSBURG, People Not Machines: Authorship and What It Means in the Berne Con-
vention, in IIC 2018, 49, 131, quoting S. RICKETSON, People or Machines: The Berne Conven-
tion and the Changing Concept of Authorship, 16 Colum.-VLA J. L. & Arts 1 (1991).
(80) DENOZZA, Contraffazione di brevetto d’invenzione e interesse al progresso tecnico ,
in: “Problemi attuali del diritto industriale”, Milano 1977.
21
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mere tool as long as it is working under human control and coordination (81): as
long as robot is doing what human designed it to do. In advanced systems, the
software can recognise improvements in its own outputs without further human
intervention precisely because it is configured with an ‘objective’ that is used to
evaluate its performance on each iteration. Indeed, the way by which the AI sys-
tem is self-improving is specifically designed by its programmer or user. In fact,
AI is a human creation and could be considered no more than a software program
(a super software at least), and we should not fall into temptation of “humanizing”
robots. Accordingly, in the event that the output of such a system comprises a pa-
tentable invention, the inventors should be the system’s programmer (considering
that AI could be an invention that invents) (82), or the user that directs it. Only if
the robots were really able to deviate from its default configuration, it could be
considered more than a tool (83).
(ii) Interpreting the concept of inventor to find a “peripheral” human inven-
tor. Innovation may change the role of the inventor. In this sense, a first solution
could be elaborating a more flexible interpretation of the concept of inventor in
computational inventions including a rule like that defined in UK copyright law for
computer-generated artworks. Inventor in computational inventions could be con-
sidered “the person by whom the arrangements necessary for the creation of the
invention are undertaken” (84). Depending on the situation, the inventor could be
the AI user or the programmer, as necessary arrangements can come from the AI
user (e.g., in terms of inputs, problem to be solved, control on AI outputs, etc.),
the programmer (in terms of programming the machine, training it on specific as-
pects, providing the right set of data to be analyzed, measuring the performances,
correct errors, etc. - this is also an aspect that will be taken into consideration for
identifying liability for robot’s actions (85)), or from both parties in case they co-
operate on a specific project.
Another possibility could be to identify the inventor as the first person to
mentally recognize and evaluate the significance of the computational results. The
inventor would be the person that recognizes the computational invention thanks
⎯⎯⎯⎯
(81) In this sense, see BLOCK, Real Rights for Artificial Inventions?, presentation held at
the EPO’s conference “Patenting Artificial Intelligence”, cit.
(82) KOHLHEPP, When the invention is an inventor: revitalizing patentable subject matter
to exclude unpredictable processes, in Minnesota Law Review, 2008, 93, 779.
(83) SUMMERFIELD, The Impact of Machine Learning on Patent Law, Part 3: Who is the
Inventor of a Machine-Assisted Invention?, 4 February 2018, available at: https://blog. paten-
tology.com.au/2018/02/the-impact-of-machine-learning-on.html.
(84) See note 1.
(85) See European Parliament, Report with recommendations to the Commission on Civil
Law Rules on Robotics, 27 January 2017 (2015/2103(INL)), para 56: “their liability should be
proportional to the actual level of instructions given to the robot and of its degree of autonomy,
so that the greater a robot's learning capability or autonomy, and the longer a robot's training,
the greater the responsibility of its trainer should be”.
22
to a mental recognition and understanding of the importance of the solution as a

potential patent (86). This would be the final step of the conception of the inven-
tion (87). In this case, the invention would be invented by the robot but “discov-
ered” by the user. The downside of this approach is that, unless the recognition
requires particular skills or knowledge, there is a risk that the identity of the in-
ventor may be arbitrary.
These solutions might risk not accurately reflecting actual contribution to the
inventive concepts of the downstream inventions and may risk undermine the in-
centive function of patent system, as they would reward persons who made no ac-
tual inventive contribution. This is more evident in case of employees, that may
claim an award as inventors. Of course, in this case the user contribution could
potentially be minimal and consequently the potential award, if any, will be pro-
portioned to the effective merit (88). More in general, in these first solutions, ro-
bots reward will be degraded, despite the inventive contribution could be even
grater than that of the AI user. This should however be justified by a patent policy
that grants prevalence to the human person than the machine, in line with the so-
called social contract at the origin of patent law and IP law in general (89). This
allocation has been analysed also from an economic perspective, by applying the
Coase theorem to ownership of computational inventions (90). And it was pro-
posed that efficiency is best attained by allocating AI property rights to users, i.e.,
parties that purchase the robot or license AI software and utilize it for inventing.
These parties hold these patents in highest value, and thus, aggregate welfare is
maximized by allocate the rights to them. Most importantly, this interpretation
would award with inventorship and thus ownership the party that invested in the
use of a particular technology, thus matching with the modern interpretation of
patent law referred above (supra § 2.3). Solutions (i) and (ii), and/or their com-
bination, could be ideal in the short term, to allow patentability. However, they do
not address the case where AI develops enough to self-conceive inventions in fu-
ture. Moreover, the use of AI would not likely be disclosed (as normally happens
with software tools), unless mentioned in the patent specification as the teaching
⎯⎯⎯⎯
(86) It would be in practice an evaluation similar to that of the inventive step test.
(87) ABBOTT, Hal the Inventor, cit., 13.
(88) For example, by applying the “German formula”, the more the employee took ad-
vantage of tools, know-how, and facilities of the employer, the less creative will be considered
his contribution. See ex multis PELLACANI, La disciplina delle invenzioni nel nuovo “Codice del-
la proprietà industriale”, in Dir. relaz. ind., 2005, 3, 739.
That could be the case of AI-assisted inventions, based on the skills necessary to govern
the AI system.
(89) See VANZETTI-MARCHETTI, Manuale di diritto industriale, cit., p. 369.
(90) , cit., 4. The Coase theorem proposition says that (i) aggregate wealth is maximized
through inter-firm transactions where property entitlements are clearly allocated, and transac-
tion costs are zero; (ii) minimization of transaction costs can affect a real-world situation mim-
icking the efficient situation predicted by Coase.
23
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relates to a particular use of that AI technology (therefore only in relation to a

software-implemented invention) (91).
(iii) Interpreting patent concepts in a human-neutral way. It could be possible
to interpret the notion of inventor, as a person, in a less formal way. As observed
above, the moral right regime in patent law is less central than in copyright law.
From a systemic perspective, it seems there are no evident negative consequences
for human inventors, and for the patent system as a whole, to grant patentability
of inventions indicating the robot as the inventor. Most likely, given the complexi-
ty of research projects, the robot would be mentioned only as one inventor within
a group of people, where it materially contributed to the conception of the inven-
tion, not performing merely operative tasks (see supra §3.1). Of course, the des-
ignation of the robot would be intended only limited to avoid procedural barriers
during the administrative procedure and for invention public transparency pur-
pose. Instead, there would be no room for applying moral rights, as they are not
compatible with robots (and robots do not need moral rights and the relevant in-
centives). It would be difficult applying other provisions that require the interven-
tion of a person, as in case of rectification of the inventor, that could be delegated
to the robot owner as a sort of representative. In sum, the robot could be consid-
ered as a sort of “passive” inventor (92).
What is the benefit of designating robot as inventors? By removing barriers
for patentability of computational inventions, particularly where no human contri-
bution is present, this could potentially stimulate investments in AI technology and
incentivizing “the development of creative computers” (93). In particular, the
recognition of the robot inventor would reward the underlying AI technology, and
this would have commercial positive consequences on the AI market. By not dis-
closing the identity of the robot-inventor it would be difficult to understand the
role of AI in innovating the R&D sector and the patent system, and how computa-
tional inventions are growing their trend. It would avoid untruthful human desig-
nations. And by disclosing the artificial inventor, it would require interpreting pa-
tent concepts and requirements in a novel way (e.g., the inventive step). Thus, the
indication of the real inventor would benefit to the functioning of the patent sys-
tem, since it is important to ensure that the right activity is being rewarded to the
right entity, to the right extent, and on the right conditions (94).
⎯⎯⎯⎯
(91) For example, use of AI could not be disclosed if the research project relates to the de-
velopment of a new chemical compound that solve a particular problem. Use of a particular AI
technology could be instead be mentioned if the invention relates a particular method where AI
is employed.
(92) Moral rights are designed to protect the (human) inventor. If there is no human in-
ventor, they could simply not apply.
Law, cit.
(94) FRASER, Computers as inventors , cit. HATTENBACH, GLUCOFT, Patents in an Era of
Infinite Monkeys and Artificial Intelligence, in Stanford Technology Law Review 2015, 19, 32-
24
(iv) Remove the concept of inventor (identification requirement). This solu-

tion appears too extreme and not in line with the goals of the patent system (95).
Whilst it would obviate to certain formal limitations, it would undermine some
traditional justifications for the patent system, e.g. the fair reward for researches.
This could negatively affect researchers who gain professional standing and eco-
nomic benefits based on their status as named inventor on a large number of pa-
tents. Moreover, as the inventor designation requirement is also inspired by a
general idea of fairness, removing it could weaken public support for the patent
system.
(v) Expand the concept if inventor to include AI systems and robots, thus al-
lowing them to be identified in the capacity of a quasi-legal person. To do that, we
should grant robots a sort of legal personality under civil law rules. This is a con-
sequence of the capacity of the machine to self-improve itself and autonomously
develop its output, that allows a self-determination that would result in some kind
of legal capacity. This is the direction recently discussed by the European Parlia-
ment that asked the Commission to study a concept of electronic personality (96).
In this sense, a possible interpretation of the robot nature in patent law should
necessarily be coordinated with the general civil law regime (particularly, liability)
that will be attributed to AI and robots (97). From the patent law perspective, a
possible legal status of robots could be in the sense of recognising a limited legal
capacity (capacità di agire) or entitlement to perform acts with legal effects: e.g.,
buy a product, sale a service, and invent something. They should instead not be
granted with a full legal capacity (capacità giuridica), i.e., be the subjects of rights
and obligations, including moral rights. In sum, robots should be considered no
more than smart tools, able to make choices, actions, and autonomous creations,
but with no rights. But ultimately this solution depends on a bio-ethical choice in
terms of which human policy is to be taken, thus determining a hierarchy between
human being and machines.
Once the robot can enjoy the inventor status, patent rights would immediately
be assigned. In the lack of contractual arrangement, ownership on the invention
needs however to follow the criteria already mentioned, i.e., to reflect investments
in the research. This would be based on a “employed to invent” model: the specif-
⎯⎯⎯⎯
51, at 32.
(95) FRASER, Computers as inventors, cit.
(96) European Parliament, Report with recommendations to the Commission on Civil Law
Rules on Robotics, cit., para 59: “Calls on the Commission […] to explore, analyse and consid-
er the implications of all possible legal solutions, such as: […] creating a specific legal status for
robots in the long run, so that at least the most sophisticated autonomous robots could be es-
tablished as having the status of electronic persons responsible for making good any damage
they may cause, and possibly applying electronic personality to cases where robots make auton-
omous decisions or otherwise interact with third parties independently”.
(97) European Parliament, Report with recommendations to the Commission on Civil Law
Rules on Robotics, cit.
25
AIDA 2016
ic purpose for using the AI should result in assigning the patent rights to the user
(licensee /robot purchaser) when the AI was specifically purchased for developing
the invention (98).
7. The solutions discussed above allow some flexibility for interpreting the
concept of inventorship and ownership in order to adapt them to an AI game-
change. With AI significantly contributing to the inventive process, or even invent-
ing autonomously, it is clear that the main criteria that should inspire the owner-
ship regime is investment in research and innovation. There is therefore the need
to finally confirm a shift from an inventor-centric system to an invention-based
system, which entails an investment-protection approach (in terms of ownership,
not inventiveness).
Having said this, we can conclude noting that incentivizing patentability and
diffusion of computational inventions shows both advantages and disadvantages.
Possible advantages include stimulating more investments in AI systems and creat-
ing more inventions, thus promoting technological progress and innovation. This
position would be in line with the view of an investment-protection patent system.
Possible disadvantages include: computational inventions may negatively impact
future human innovation as supplanting human invention; reduce R&D specializa-
tion; and finally rise a risk of over-proliferation of inventions. Indeed, AI technol-
ogy improvement could standardize inventive activity and lead to the generation of
a large number of inventions at a relatively low cost. This may risk causing the
trend of development of patentable inventions to rise. It will be necessary to care-
fully monitor this aspect and investigate possible internal balancing tools to main-
tain efficiency of the patent system, including: restrict interpretation of patentabil-
ity requirements to adapt them to AI-assisted or computational inventions (99);
and rethink the patent scope, that may need to be reduced to rebalance the
changing costs of inventing (100). The 20-year patent term can become too much
of a reward for an activity that becomes simpler (101). Reducing the patent term
may be a sufficient balancing tool. This may be achieved by granting different pa-
tent periods in case of no human involvement in the inventive process. Finally, as
AI begins to invent intensively there is a potential risk that AI owners could get a
super-monopoly in this area, in favor of a limited circle of AI developing compa-
nies. In a similar sense, the European Parliament has stressed on the importance
of promoting an open environment for AI innovation, granting interoperability of
⎯⎯⎯⎯
(98) PEARLMAN, cit., 36.
(99) Finally, the risk in the long term seems a standardization of the inventive activity, that
will be largely taken by AI technologies. It will remain on the human side, the decision to patent
or not an invention. The practical difficulty appears to be in terms of selecting inventions.
(100) VERTINSKY, RICE, Thinking about thinking machines: implications of machine in-
ventors for patent law, in Boston University Journal of Science & Technology Law , 2002, 613.
(101) In the same sense, see FRASER, Computers as inventors, cit., para 4.2.
26
AI systems, access to the source code, input data, and construction details, and to
evaluate compulsory licenses to avoid lock-in effects (102). Hence, it will be im-
portant to monitor the status of pro-competitive provisions in patent law, and
whether they need to be integrated with rules taken from competition law experi-
ence (103).
Abstract
The recent development of Artificial Intelligence (AI) brings with it the prom-
ise of future technological innovations developed independently by intelligent
computational systems. In the patent field, the advent of AI in the inventive pro-
cess questions the subjective/human state of the inventor. In particular, it is dis-
cussed whether, and to whom, the objects created by the AI can belong. And even
if, due to their non-human origin, they are worthy of protection. This paper aims
to carry out a first investigation on how the ownership regime of patentable inven-
tions, under the Italian legislation and the European Patent Convention, can apply
to AI's inventions. The analysis concludes that the existing patent system, at least
in principle, is compatible with computational inventions, although it does not al-
low their patentability, at a procedural level. It is therefore necessary to consider
an interpretative evolution in terms of ownership, in particular by consolidating
the transition from an inventor-centric system to an investment protection system.
Finally, the article proposes some interpretative solutions to reconcile the patent
system with the development of computational inventions.
*****
Il recente sviluppo delle tecnologie di cd. Intelligenza Artificiale (IA) porta
con sé la promessa di future innovazioni tecnologiche messe a punto autonoma-
mente da sistemi computazionali intelligenti. In campo brevettuale, l'avvento
dell'IA nel processo inventivo mette in discussione lo stato soggettivo/umano
dell'inventore. In particolare è discusso se, e a chi, gli oggetti creati dalla IA pos-
sono appartenere. E addirittura se essi stessi, per via della loro origine non uma-
na, siano meritevoli di protezione. Questo lavoro vuole effettuare una prima rico-
gnizione di come il regime di appartenenza delle invenzioni brevettabili, ai sensi
della normativa Italiana e della Convenzione sul brevetto europeo, possa applicarsi
alle invenzioni della IA. L'analisi conclude osservando che il sistema brevettuale
⎯⎯⎯⎯
(102) European Parliament, Report with recommendations to the Commission on Civil
Law Rules on Robotics, cit., para 9.
(103) On this point, see GHIDINI, Rethinking intellectual property, Elgar, 2018, 138 ff.,
that for example proposes the introduction of a duty to grant to willing licensees access at
FRAND terms to implement patens on standards or essential to a standard, that have been so
far admitted out of any specific legal provision on the basis of case-by-case antitrust driven
consideration under the EU caselaw. In particular, patent law could define the criteria concern-
ing the conditions for the imposition of the duty to license and on the contrary the justification
for the patent owner to retain the facility of issuing an injunction. The law could also define
clear basic criteria for determination of fair license fees.
27
AIDA 2016
esistente, almeno in linea di principio, è compatibile con le invenzioni computa-

zionali, sebbene non ne consenta la brevettabilità, quantomeno a livello procedura-
le. Occorre quindi considerare una evoluzione interpretativa del regime di appar-
tenenza, in particolare consolidando il passaggio da un sistema inventore-centrico
a un sistema di protezione degli investimenti. L'articolo propone infine alcune so-
luzioni interpretative che permettano di conciliare il sistema brevettuale con lo svi-
luppo delle invenzioni computazionali.
28
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Banterle ownershipofAIinventions AIDA

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Ownership of inventions created by Artiﬁcial Intelligence

Article · October 2018

Artificial Intelligence creativity View project

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SUMMARY – 1. Introduction – 1.1 The concept of Artificial Intelligence – 2. Ownership of arti-

1. The rise of Artificial intelligence (AI) leads to questioning the subjec-

No designation of robot-inventors appears to exist to date in patent registries.

1.1. There is no definition of AI. This concept should be addressed from a

3.1. In the Italian tradition, “invention” is normally referred as a new original

human creativity. But this seems more linked to an inventor-centric tradition,

4. Patent laws’ approach in regulating ownership of inventions is based on an

4.3. Apparently machine-generated inventions are not compatible with the

5.3. It must be determined whether the missing or wrong designation of the

6. We concluded in the previous paragraphs that (i) there is not necessarily a

to a mental recognition and understanding of the importance of the solution as a

relates to a particular use of that AI technology (therefore only in relation to a

(iv) Remove the concept of inventor (identification requirement). This solu-

esistente, almeno in linea di principio, è compatibile con le invenzioni computa-

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