AI and IP: The DABUS patent case

AI and IP - The DABUS patent case

Introduction

Artificial intelligence has gained ubiquitousness in today’s world. It has become an integral part of our lives in various ways, often unnoticed by us. Technology has evolved in leaps and bounds and today AI is capable of performing human functions with increasing autonomy. In this context, a question that has often been asked is whether AI should be granted intellectual property. The question is no longer a moot point, after the famous DABUS case where the machine DABUS (Device Autonomously Bootstrapping Uniform Sensibility) was named as an inventor and one Mr. Stephen Thaler claimed patent protection in his name for something created by DABUS. Thaler asserted that since he owned DABUS he derived the right to claim patent for the invention in his own name.

Dabus case

Missouri based AI-expert Dr. Stephen Thaler created DABUS and fed into it information including abstract concepts related to design, practicality, color, and emotion. Subsequently, it was claimed that DABUS designed two original inventions. The first invention claimed is a fractal drink container that was capable of shape-shifting and hence more suitable for  use by prosthetic and robotic hands. The second is a flickering light that mimics brain activity, and was named “neural flame” by Thaler himself. This light was seen as an effective tool to catch a person’s attention in emergent situations.

Patent applications in various jurisdictions

A team of international attorneys (Surrey team) together filed patent applications in the patent offices of the United States of America (USPTO), United Kingdom (UKIPO) and in the European Patent Office (EPO). Across all three jurisdictions, the applications have failed, at the application stage and at the appellate level in the England & Wales High Court. This section explains the decisions made in each of the jurisdictions and proceeds to an academic analysis of the same in later portions of the article.

United States Patents and Trademark Office

In July 2019, the Surrey team drew attention from across the word when it filed 2 patent applications naming DABUS as the inventor for the two devices. The application stated that DABUS made the two inventions without any human assistance. The USPTO discussed at length the issue whether an AI could be recognised as an inventor in patent prosecution.

After an initial review, the USPTO determined that the applications were incomplete because they failed to identify a human inventor. In response, the Surrey team submitted petitions seeking supervisory review. After the Office dismissed those petitions in December 2019, the Surrey team moved for reconsideration, contending that inventorship should not be limited to natural persons.

The Office ultimately denied the motions for reconsideration of the petitions in the two applications, and published one of those decisions in late April. The USPTO emphasized that the relevant statutory provisions governing patents consistently refer to inventors as natural persons. The Office reasoned that a plain reading of those provisions precluded a finding that the term “inventor” can refer to an AI system. The USPTO also cited several Federal Circuit precedents stating that only natural persons can be inventors. In University of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315, 1323 (Fed. Cir. 2013), for example, the Federal Circuit rejected a claim that corporations or sovereigns could be inventors. Because the relevant statutes and case law, as well as USPTO rules and regulations, limit inventorship to natural persons, the Office concluded that the Surrey team’s patent applications could not list an AI system as the inventor.

As part of its decision, the USPTO also acknowledged several public policy arguments offered by the Surrey team. The team maintained that allowing an AI system to be listed as an inventor would (i) incentivize innovation; (ii) reduce the improper naming of inventors; and (iii) promote public notice of an invention’s actual creator. These considerations, however, were insufficient to overcome the plain meaning of U.S. patent laws as construed by the courts.

While the USPTO’s decision provides clarity that an AI system cannot be an inventor under current law, it leaves many questions unanswered. For example, it remains unclear whether and to what extent legal protections are available to owners of inventions conceived with the assistance of AI. Likewise, as the decision arose in the context of patents, it obviously does not address other forms of IP created without human aid. More broadly, the decision meaningfully adds to the ongoing dialogue about the implications of AI on long standing concepts of IP rights under U.S. law while raising fundamental questions as to whether existing laws need to be revamped to address new and emerging technologies. Stakeholders should monitor changes in this sphere and watch for additional guidance from the USPTO.

United Kingdom : Stephen L Thaler v. Comptroller General of Patents, Design and Trade Mark

Stephen Thaler filed two patent applications bearing nos. GB 1816909.4 and GB 1818161.0 on 17.10.2017  and 07.11.2018 respectively. The forms accompanying the applications named DABUS as the inventor and Thaler claimed to have acquired rights by virtue of ownership of the inventor creativity machine itself.

The obvious objection raised by the UKIPO was that a machine cannot be named as an inventor and a (natural) person has to be identified.

3 issues were identified by the UKIPO during the hearing of which two were substantive and dealt with the question of whether a non-human can be recognised as an inventor, and if yes, how does the right to apply for a patent move from this non-human inventor to the applicant which in this case is the owner of DABUS, Stephen Thaler.  The UKIPO examined the Patents Act, 1977 and the Patent Rules, 2007 and ruled that the applications failed.

The Applicant had argued that the term “person” should  be construed broader than just “human”. The function of Sections 7 and 13 of the Act was to identify the “actual deviser” irrespective of whether they are human and also urged that failure to  confer a broad interpretation would be disadvantageous as it would deprive the public of an invention, since the inventor is not rewarded with a patent in case of publication.

Interestingly, the UKIPO accepted that DABUS was the inventor of the two claimed devices. It stated that the name of an inventor is accepted at face value when presented and it is for others to challenge the same. However, the UKIPO found itself unable to accept the inventor as capable of being named under the Act for patent protection.

It was also argued by the applicant that while the global framework for patent laws assumes the inventor to be a human, it also does not expressly exclude AI from being named as inventors. A forceful reiteration was made, pointing out that there are explicit prohibitions on patentability of certain inventions in the Act and under the European Patent Convention (EPC). In contrast, the absence of terms excluding AI as an inventor means that there is scope for the same to be accepted. However, the UKIPO did not accept this argument. It was explained that the Act raises a clear expectation that “person” under Section 7 and “inventor” under Section 13 are the same. This has been the interpretation of the legal scheme and there exists no reason to doubt its correctness.

Another important point was regarding the acquisition of rights from DABUS by Stephen Thaler. The applicant had asserted that he acquired the rights to the patent by virtue of ownership of the inventor and is therefore the successor in title to the inventor. It was argued that, in general, ownership of a machine transfers ownership of any products of the machine to the owner, which in this case is the applicant. However, the UKIPO pointed out that  acquiring a right to a patent by virtue of ownership of the inventor is not covered by category (b) or (c) of section 7(2) of the Act and hence, the applicant had not provided a satisfactory derivation of right. There appears to be no law that allows for the transfer of ownership of the invention from the inventor to the owner in this case, as the inventor cannot itself hold property. Thus, even if it were conceded that DABUS meets the requirements of the Act to be considered an inventor, derivation of right through ownership of the inventor does not meet the requirements of section 7(2) and hence the applicant is not entitled to apply for the patents in question.

Thus, the patent application was refused by the UKIPO. An appeal was filed in the High Court of England and Wales and vide order dt. 21.09.2020, the Court affirmed the decision by the UKIPO.  The High Court noted that it was never contended by Thaler that DABUS was a legal personality or that it deserved such status. Thus, what was actually being argued for was a very wide interpretation of the word “inventor” without pushing for a change in the law regarding legal personhood. It went on to observe that this would present a paradox: “it becomes possible for an “inventor”, if not also a person, to be incapable of owning or applying for a patent and equally incapable of transferring such rights to another.”

The Post script had an important point by the presiding judge:- “As I have noted, the question of whether the owner/controller of an artificially intelligent machine that “invents” something can be said, him- or herself, to be the inventor was not a matter that was argued before me. Dr Thaler expressly declined to advance that submission not merely because he considered it bad in law, but more importantly because (in moral terms) he considered that he would illegitimately be taking credit for an invention that was not his. Clearly, what arguments are or are not framed in relation to patent applications are matters for the applicant. However, I would wish to make clear that I in no way regard the argument that the owner/controller of an artificially intelligent machine is the “actual deviser of the invention” as an improper one. Whether the argument succeeds or not is a different question and not one for this appeal: but it would be wrong to regard this judgment as discouraging an applicant from at least advancing the contention, if so advised.”

Copy of the UKIPO decision available at https://www.ipo.gov.uk/p-challenge-decision-results/o74119.pdf

Copy of the High Court decision available at https://www.bailii.org/ew/cases/EWHC/Patents/2020/2412.html

European Patent Office

Thaler filed patent applications bearing nos. EP 18 275 163 and EP 18 275 174 on 17.10.2018 and 07.11.2018 respectively. The European Patent Office (EPO) on 27.10.2020 published its decision to reject the applications and also set out the grounds for the denial. The arguments raised by the applicants were substantially similar to their arguments before the UKIPO. The EPO in its statement explained that legislative history is evidence that the drafters of the EPC envisaged only natural persons to be inventors for a patent application. This is demonstrated by the fact that while the possibility of recognising legal persons as inventors was discussed, a corresponding rule was never introduced in the draft, making the intention clear. The EPO explained that rights can only be bestowed upon persons and patent rights are exclusively meant for natural persons. AI is a thing that is not capable of exercising rights and hence does not warrant the same , in the eyes of established law. Assuming the inventor to be a natural person also seems to be internationally accepted and applicable standard and the EPO saw no reason to divert from the same, in the absence of any case law to the effect.

Copy of the statements available at

https://register.epo.org/application?documentId=E4B63SD62191498&number=EP18275163&lng=en&npl=false

https://register.epo.org/application?documentId=E4B63OBI2076498&number=EP18275174&lng=en&npl=false

Conclusion

As we can see from the above three decisions, the main question to be answered is whether AI can be recognised as an “inventor” for the purposes of patent law. The answer seems to be no, since AI cannot exercise rights in the absence of personhood in the eyes of law. International treaties as well as domestic legislations across jurisdictions operate on the assumption that only natural persons can be inventors and be named in patent applications. Even in cases where rights are transferred and another person makes the application, law necessitates that the applicant be a natural person. Therefore, the precursory question to be answered is whether it is time for jurisprudence to create legal fiction in favour of AI and confer it with personhood, which would make it capable of holding IP rights. This question has gained traction in recent times due to events beyond the DABUS case. Consultations and calls for view have been made by governments and international organisations on the topic of granting patents with AI as an inventor and also on the broader topic of personhood for AI. It will be interesting to see how various stakeholders respond to this debate and how the law evolves, in jurisprudence as well as in the realm of intellectual property.

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