Claiming artificial intelligence (“AI”) as an inventor on patent applications has been an issue of interest lately, with key decisions being rendered in several jurisdictions. Applications covering two inventions[1] at the forefront of this debate list DABUS (“Device for the Autonomous Bootstrapping of Unified Sentience”) as the sole inventor. DABUS is a creativity machine that uses an artificial neural network and simulates a human brain that can learn and make decisions. Dr. Stephen Thaler, the owner and creator of DABUS, is listed as the applicant and assignee on the applications, which were filed in more than a dozen countries and with the European Patent Office (EPO).
Over the last couple of years, key decisions have been rendered by the EPO, the United Kingdom, Australia, South Africa, and the United States.
The United States
The United States Patent and Trademark Office (USPTO) initially rejected applications covering the two inventions, stating that the threshold of inventorship is “conception,” the mental component, which AI does not satisfy. The USPTO found no intent to expand the definition of inventor beyond natural persons but did, however, acknowledge and consider the following public policy considerations set forth by Dr. Thaler to support the expansion of the definition of an “inventor”:
- incentivizing innovation;
- reducing the improper naming of inventors; and
- promoting public notice of an invention’s actual creator.
Ultimately, the USPTO determined that these public policy considerations were insufficient to outweigh the plain meaning of the statutory language under United States law.
In August 2020, Dr. Thaler appealed the USPTO’s decisions to the Eastern District of Virginia. His main arguments on appeal were (1) not allowing AI as inventors discourages innovation and encourages misrepresentation by individuals claiming credit for work they did not perform and (2) the patent system should be indifferent to the means by which invention comes about. The appellate court affirmed the rejection in September 2021 with the judge noting that
[a]s technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship … But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.[2]
The United Kingdom
In July 2021, Dr. Thaler appealed to the United Kingdom Court of Appeal following rejections of applications covering both DABUS inventions from the United Kingdom Intellectual Property Office (UKIPO) and the United Kingdom High Court. A 2-1 decision affirming the previous rejections was issued in September 2021 based upon two key determinations: (1) an inventor must be a human and (2) Dr. Thaler was not entitled to apply for the patents because he is not the inventor or a joint inventor.[3] Based on the use of terms such as “person” and “individual” in the Patents Act, the Court found that both inventors and applicants must be natural persons. Dr. Thaler now has the option to appeal the U.K. Court of Appeal’s decision.
European Patent Office (EPO)
Similar to the U.S. and the U.K., applications covering the two DABUS inventions were refused by the EPO following examination. The EPO found that the applications did not meet the legal requirement of the European Patent Convention (EPC) that an inventor designated in the application be a human being, not a machine. In Europe, designation of an inventor in every application for patent is mandatory and is fatal if unsatisfied. The EPO reasoned that inventorship conferred various legal rights but that to exercise them “the inventor had to have a legal personality, which AI systems or machines do not enjoy.” In late December 2021, appeals by Dr. Thaler were dismissed following oral proceedings and the EPO affirmed the determination that only a human inventor could be listed as an inventor on patent applications within the meaning of the EPC.
South Africa
In July 2021, two patents stemming from the above-referenced applications were granted by the Companies and Intellectual Property Commission (CIPC) listing DABUS as the sole inventor and Dr. Thaler as the owner. In South Africa, there is no formal examination process for patent applications. The CIPC simply relies on the World Intellectual Property Organization’s (WIPO) acceptance of the designation for the corresponding PCT applications. Following this “rubber stamp” procedure, any third party can apply to the Court of the Commissioner of Patents to revoke the patent based on any of the following:
- lack of inventiveness;
- lack of novelty; or
- challenge that because Dr. Thaler was not the inventor in the application, he was not entitled to apply for it.
The right of a third party to appeal remains for the entire term of the patent. As such, these two patents will remain enforceable until such time as they are successfully challenged.
Australia
The two applications covering DABUS’ inventions were initially rejected by the Australian Patent Office, but these rejections were ultimately overturned on appeal.[4] This is the first instance where a jurisdiction having a formal patent prosecution process has accepted AI as an inventor. In its decision, the Court addressed AI inventorship by separating the question of whether AI can own or control a patent from whether AI can be an inventor. The Court concluded that only a human or other legal entity can be an owner, controller, or patentee, but AI can be an inventor.
The following are key takeaways from the decision:
- The ordinary meaning of “inventor” does not exclude non-humans;
- Allowing AI as the inventor would avoid uncertainty as to who should be recognized for the inventive process and misidentification of inventors; and
- Australian patent law is more concerned with “inventive step” and not the mental state or actions of an inventor (no “consciousness” requirement).
The Court also relied heavily on public policy considerations in making its decision, stating that the goal of the patent system is to promote “economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.” As part of its decision, the Court also ruled that Dr. Thaler is the proper patentee because he owns and controls DABUS. On August 31, 2021, IP Australia, the government agency that oversees intellectual property, announced that it would appeal the federal court decision.
On April 13, 2022, a five-justice panel on the Federal Court of Australia’s Full Court reversed the lower court’s ruling allowing listing AI as an inventor. In reaching its decision, the Federal Court pointed to the High Court of Australia’s recent ruling in D’Arcy v. Myriad Genetics, wherein the High Court judges “repeatedly used the phrase ‘human action’ to describe what defined subject matter that patents could cover.” The Federal Court was also not as persuaded by Dr. Thaler’s public policy arguments, stating, “We do not accept the premise of the proposition, accepted by the primary judge and apparently influential in his reasoning, that if DABUS is not accepted to be an inventor, no invention devised by an artificial intelligence system is capable of being granted a patent … Thaler would have a good case to be named on those patents because he ‘is the owner of the copyright in the DABUS source code and the computer on which DABUS operates, and … he is also responsible for the maintenance and running costs.’” Counsel for Dr. Thaler has indicated a plan to seek appeal of this decision.
With AI only being recognized as an inventor for patents in South Africa by way of formalities and not a substantive procedure, it appears that changes in the relevant statutory language will be required before AI as an inventor can gain more widespread acceptance.
If you have any questions related to this topic, please contact Julie Zamler at julie@burrisiplaw.com.
[1] International Application (PCT) Publication No. WO 2020/0079499, along with foreign counterparts in Australia, Brazil, Canada, Europe, Great Britain, Israel, India, and South Africa, as well as U.S. Application Serial Nos. 16/524,350 and 16/524,532.
[2] Thaler v. Hirshfeld, No. 1:20-cv-903, 2021 WL 3934803 (E.D. Va. Sept. 2, 2021)
[3] Thaler v. Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374 (21 September 2021)
[4] Thaler v. Commissioner of Patents [2021] FCA 879