DABUS out of the running for inventor’s rights - no leg to stand on?

Avi Freeman & Thomas Dickson | March 2021

In late 2018 Dr Stephen Thaler filed two patent applications with the UK IPO. Upon filing, these applications were fairly typical, including all the necessary information at the time of filing to proceed through the patent system. Indeed, the applications followed a fairly standard trajectory until in July 2019 they started to attract substantial attention. Statements of inventorship were filed on 23 July, for each application, claiming a type of “creativity machine”, named “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience) as responsible for “inventing” the subject matter of the patent applications. Naturally this raised some flags at the Patent Office. Can something that is a machine, and not a human, be considered an inventor? Can such a machine own the property rights usually awarded to an inventor, and can they then assign these rights to someone, or something, else?

The Statements of Inventorship filed for the applications were rejected by the UK IPO. In response, Dr Thaler argued that “Inventorship was not confined to natural persons” and whilst “it was not being contended that DABUS had legal personality” as “the Patent Form 7 asserted an absence of legal personality on the part of DABUS and the Applications were not in the name of DABUS but in the name of Dr Thaler”, Dr Thaler nonetheless considers DABUS the deviser of the inventions of the patents. Accordingly, his expressed view was that DABUS should be named as the inventor on the patent applications, or at least has the right to be named as inventor. Dr Thaler also considers any property rights owned by DABUS, as the inventor, to be automatically assigned to him as the owner of DABUS. 

The UKIPO replied accordingly: 

“The naming of a machine as inventor did not meet the requirements of the Patents Act 1977 and that a person – meaning a natural person and not merely a legal person – must be identified as the inventor.”

Suffice to say, Dr Thaler was not happy with this response and requested a hearing on the matter. The issue was brought before Mr Huw Jones, acting for the Comptroller. Mr Jones decided that as DABUS was a machine and not a natural person, it subsequently could not be named as an inventor on the patent applications. Mr Jones then went on to explain that as DABUS could not be considered an inventor on the applications, DABUS did not have any rights it could transfer to Dr Thaler, and subsequently concluded that the applications should be deemed withdrawn as no inventor had been designated within the given timeframe. 

Dr Thaler appealed Mr Jones’s decision, bringing the case before the High Court. The High Court decision on the matter can be found here. In summary, the Honourable Mr Justice Marcus Smith concluded that whilst the applications raise fundamental questions regarding artificial intelligence (AI) and the Patents Act 1977, “an invention, an application for the grant of a patent and the patent itself are all property rights” and “only a person can hold property”, so even if DABUS could be considered the “inventor” of the applications, DABUS lacks the ability to transfer any rights to Dr Thaler, i.e. “because DABUS is a thing, it cannot even hold property, let alone transfer it”. 

Who then is the inventor of these inventions? Sadly, in Dr Thaler’s case (unless further appealed) it does not matter as the applications are deemed withdrawn. This sets precedent for future cases, and, for now, it seems the best option is to put down the creator of the AI machine as the inventor on any patent application for an invention created by said machine. However, the case raises further issues surrounding AI and inventorship rights. How will the law rule on inventorship of inventions produced by someone using a third party’s AI machine to invent? Indeed, will, or could, an AI machine ever have the same rights as a natural person? 

At least with regards to inventorship of patent applications, it seems probable at this point that the answer is no. We may however see a shift towards the approach applied in copyright regarding AI and ownership, i.e. property rights, accrued in a patent, may automatically be awarded to the natural person who provided the AI machine with the means and tools to innovate and invent. Arguably, had Dr Thaler simply put himself down as the inventor, the hearing and appeal would not have happened. However, had third party objections been filed in this situation asserting Dr Thaler was not the true inventor and DABUS was, how would the courts have ruled?

Interestingly, as Dr Thaler was so adamant that DABUS was the inventor, leading to the deemed withdrawal, no consideration could be given to the patentability, and more specifically the inventiveness, of the DABUS inventions. It is noteworthy that AI machines often appear to work in a similar fashion to the fictitious skilled person, employed to test whether a patent application includes an inventive step over the state of the art. Dr Thaler explained that DABUS includes “a first artificial neural network, made up of a series of smaller neural networks, that has been trained with general information from various knowledge domains” and a “second ’critic‘ artificial neural network monitors the first neural network for new ideas and identifies those ideas that are sufficiently novel compared to the machine's pre-existing knowledge base”. Further details on the workings of DABUS can be found here, here, and here. In short, DABUS appears to achieve innovation by brute force, by incrementally altering examples provided by a user based on pre-defined, but relatively flexible, parameters. 

DABUS, as explained by Dr Thaler, appears to apply a similar method to devise an invention from the state of the art as is used to test if an application includes an inventive step that would not be apparent to a skilled person. It therefore poses the question: If DABUS could be listed as the inventor, would an examiner consider the content of such an application inventive? This is yet to be considered, but it is easy to imagine that this will be an issue for patent systems and the courts in the future. 

AI continues to be a matter of contention within patent systems around the world and this does not look set to change. As the nature of AI develops, it is important to keep track of how the law deals with the issues as they arise. While Dr Thaler was unsuccessful in this instance, he certainly has helped to provide some clarity on how the law will deal with the issues his applications raised.