Dr Stephen Thaler filed patent applications in multiple countries for inventions which were generated by an Artificial Intelligence (AI) machine named “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience).

What is DABUS?

Dr Stephen Thaler filed patent applications in multiple countries for inventions which were generated by an Artificial Intelligence (AI) machine named “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience). The inventions concerned an improved beverage container and a search-and-rescue flashlight. The DABUS machine is shown in US Patent 10,423,875.

Contrary to usual practice Dr Thaler named DABUS as the inventor. This triggered a series of arguments in various jurisdictions regarding whether or not a machine could be accepted as an inventor for a patent.

What do the Patent Offices think?

The patents have been granted in South Africa, making it the first granted patent with a non-human inventor. It is worth noting that South Africa is a non-examining patent system and the patent may yet be challenged for revocation. Nonetheless, the patents are now in force in South Africa.

The European Patent Office (EPO) refused the applications under Article 81 EPC and Rule 19(1) EPC because the inventor must be a “human” inventor and a machine cannot transfer its rights to another because it has no legal capacity. Dr Thaler appealed the decision. The appeal was unsuccessful as the Board of Appeal agreed with the decision of the Receiving Section and held that the requirements of Article 81 EPC (Designation of Inventor) were not met.

The patent applications have been refused by the UK Intellectual Property Office (UKIPO) for failing to meet the inventorship requirements. This decision was appealed by Dr Thaler to the High Court where the appeal was refused. Mr Justice Smith concluded that it is extremely clear that “an inventor must be a person”.

The decision was appealed by Dr Thaler to the Court of Appeal. The decision was once again dismissed. However, the decision came from a split judgement with the judges agreeing that the inventor must be a natural person but disagreeing with regards to the requirements of Section 13 UKPA (the right of an inventor to be mentioned).

Similarly, the United States Patent and Trademark Office (USPTO) refused the applications because the inventor was not a “natural person”.

Interestingly, the Australian Patent Office and the Australian Federal Court have disagreed about the outcome of the DABUS applications. The Australian Patent Office initially refused the applications. On appeal, the Australian Federal Court judged that there was nothing in the Patents Act 1990 that excludes the inventor from being a non-human entity and subsequently allowed the applications.

What’s next?

It is fair to say that the DABUS applications have caused a stir in the patent world. The UK government held a consultation on the protection of AI inventions in which many believe inventorship criteria should change. Furthermore, the Chartered Institute of Patent Attorneys (CIPA) called for clarification on the matter. Will there be an attempt at harmonisation for the protection of AI derived inventions? There are further pending applications in other countries, the results of which are yet to be known.

It is clear that this isn’t the end of the road for AI derived inventions. Watch this space for updates.

James Bishop

Natural Person

Author:

James Bishop

Technical Assistant
Share this post