AI inventorship, the DABUS case and who will control the future

No patent for an AI inventor say judges 

In September 2021, the Court of Appeal concluded that an AI system or machine could not be an inventor under the UK Patents Act. The case brought by Dr Thaler, inventor of the AI machine ‘DABUS’, concerned two patent applications naming DABUS as inventor. The two applications related to the shape of parts of packaging for food and a form of flashing light for attracting enhanced attention.

The court’s decision was based on a simple point of legislative interpretation: that an inventor under the Patents Act must be a person. Whether or not one agrees with it, the decision highlights the difficulties in how to accommodate advances in creative AI.

In this article we look at important points arising from the judgment, and briefly touch on the UK IPO’s current consultation aimed at addressing these thorny issues.

Three main issues 

The three main issues in the case relate to who has the right to apply for and obtain a patent, and the naming of the inventor(s) in a patent application. 

1. Does the Patents Act require an inventor to be a person?

All three judges agreed that it does. Why? The Patents Act provides for patents to be granted only to the inventor(s), any person(s) who are entitled to ownership of the invention (eg through legislation or contract) or the successors in title of such persons. Indeed, the Patents Act as a whole assumes that patents will be granted to a “person or persons”, and a historical review of UK patent legislation supports this analysis. Parliamentary legislators putting the Act in place in the 1970s did not envisage or cater for “thinking machines were capable of devising inventions”. Of course, a person could be either a human or a company, and the inventor’s employer can be the owner of the invention automatically. However, the Patents Act requires that the inventor is both a person, and the “actual deviser” of the invention, and this must be a human.

2. Was Dr Thaler entitled to apply for the patents given that the inventions were made by DABUS?

The judges were split on this issue, but two out of three concluded that Dr Thaler was not entitled to make the applications. This is because he did not identify any rule of law showing that he was entitled to the “whole of the property” in the invention at the time it was made as required by the Patents Act.

3. What was the right response to Dr Thaler’s Statement of Inventorship?

Once again, the judges were split, with the majority deciding the UK Intellectual Property Office had been right to deem the applications withdrawn. Although the Patents Act does not require an investigation of the factual or legal merits of inventorship nor the applicant’s derived right to the patent, it does require assessment of apparent compliance with applicable statutory requirements. Dr Thaler identifying a non-person as the inventor was a legal impossibility meaning that the applications could and should immediately be determined as incorrectly filed. 

The unanswered question

This ruling did not provide a satisfactory answer to the question of whether someone can or should be able to obtain a patent for an invention if they are the owner of the AI machine that invented it. The question set by the applicant remained unanswered, although as one of the judges commented: 

“There is more than a hint in this case of the idea that if only Dr Thaler was not such an obsessive and, instead of calling DABUS the inventor, he named himself and then none of these problems would arise.”

The approach of naming the human maker of the AI as inventor might work in practice as it is not the job of the UK IPO to investigate inventorship. However, in a situation where the “inventor” is in reality the AI rather than a person, arguably no person has the right to apply for a patent. So the approach is unsatisfactory in that it does not reflect reality. Problems might also arise if someone made an application disputing the named inventor. Incorrect naming of an inventor can be a reason for patent revocation but only if the disputing applicant is themselves the person entitled to a patent for the invention. However, as we have seen no person would be entitled if the AI were the inventor. This scenario might even leave the patent registered and enforceable, but without a named human inventor. 

We understand that a further appeal is likely. 

Around the world

Both the US and European patent offices have rejected Dr Thaler’s applications on a similar basis to the UK IPO. However, Dr Thaler has had greater success in South Africa and Australia. 

South Africa operates a depositary system and so only basic formal requirements are checked before grant.

The Federal Court of Australia reviewed the case after a patent was initially denied. It concluded that refusing to grant patents in these circumstances would be contrary to the purpose of patent legislation: to promote economic wellbeing through technological innovation. A key difference between Australian patent law and that of the UK, Europe and the US may help to explain the different decisions reached.  Australian law does not include a definition of “inventor”. 

The Australian court took the view that the legislation indicates that the inventor can be a human, not that it must be, but a patent applicant must be a legal person. The court was willing to assume that Dr Thaler derives entitlement to the patents through possession of DABUS, ownership of the copyright in DABUS’ source code, and ownership and possession of the computer on which DABUS operates. This decision has been appealed by IP Australia. 

The UK IPO’s consultation process

UK lawmakers are looking for the best path with help from users of the system. A set of public consultations and public outreach events on AI and IP protection is under way. A first consultation in autumn 2020 fleshed out the issues – the results are available here. A recently closed further consultation focused in on patents and copyright.  

The UK IPO asked stakeholders to rank the following patent policy options in order of preference:

Option 0: Make no legal change so that the current system where patents are only available where the inventor is human would be maintained;

Option 1: Expand the meaning of “inventor” to include humans responsible for an AI system which devises inventions; 

Option 2: Allow patent applications to identify AI as inventor by either:

• (a) amending legislation to allow AI to be named as the inventor; or

• (b) amending legislation to remove the requirement to name an inventor if the invention is devised by AI; 

Option 3: Protect AI-devised inventions through a new type of protection.

Those most in favour of protecting AI inventorship have tended to suggest Option 2a. Well-rehearsed arguments include the following:

• the DABUS case highlights real situations where it is impossible to identify human intellectual input in a final invention. Legislation should reflect this reality. 

• AI inventorship should benefit from the incentives that patenting brings, especially given the prospects of important future inventions. 

• there is no logical basis for protection of an invention being affected by its origin. 

For others, the evidence does not support viewing AI inventorship independently of significant human contribution at various stages of AI development and output generation. So human operators could still be deemed inventors. And even if purely AI-generated inventions were to emerge, there is no clear evidence that patentability would encourage innovation. 

The risk of harm to fair competition and to smaller, newer businesses; possible effects on R&D and excessive natural resource consumption have also been highlighted. 

What next?

We are optimistic that the open-minded consultation process at the UKIPO will take account of the views of all system users and find a fair balance. Given that unfolding process, the Supreme Court will need to exert caution if it opines on the DABUS case.

The World Intellectual Property Organisation has convened a discussion series to bring together national representatives tackling these issues as part of its Artificial Intelligence and Intellectual Property Policy Programme. Well-researched approaches leading to balanced legislation are likely to be influential internationally, although we can expect different countries following their own paths, and we are likely to see considerable divergence in approach in the short to medium term.

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