In recent months, DABUS, or Device for the Autonomous Bootstrapping of Unified Sentience, has challenged the conventional and accepted profile of what constitutes an inventor. Created by Dr Stephen Thaler, DABUS is an artificial intelligence (AI) system credited, at least by Dr Thaler, as the creative mind behind two inventions, a so-called fractal container and a so-called neural flame. In 2018, Dr Thaler filed respective patent applications directed to each of these inventions designating himself as the applicant and DABUS as the sole inventor. These initial applications were filed in parallel at the EPO and UKIPO, and later also at the USPTO. In 2019, Dr Thaler followed up by filing an International patent application based on his earlier patent applications and has since filed a number of national phase patent applications in other countries derived from the International application.

The designation of DABUS, not Dr Thaler, as the sole inventor in respect of these patent applications has forced a number of patent offices and judicial systems across a variety of jurisdictions to issue decisions as to whether an AI system can legally be classed as an inventor in relation to a patent right. Dr Thaler and his representatives claim that DABUS has only received training in the general knowledge of particular technical fields pertaining to the inventions at issue and subsequently, based on these teachings, proceeded to conceive of the inventions. That is to say, according to Dr Thaler and his representatives, it was the machine (DABUS), not a person, that had identified inventive subject matter. Dr Thaler’s opinion is that if a natural person had received the same training, that natural person would meet the criteria to be deemed an inventor. It should be noted that Dr Thaler is not arguing that an AI system should be the proprietor of a patent right, rather that an AI system should be able to be credited with the derivation of an inventive concept. However, in many jurisdictions, it seems unclear if the current legal framework can support AI systems as inventors. For example, how can a proprietor derive the right to an invention from an AI inventor?

Historically, inventors have always been human beings. Therefore, in a number of key jurisdictions across the globe, patent offices have objected to Dr Thaler’s classification of the AI system as an inventor. In the US, one of Dr Thaler’s patent applications was refused, the USPTO being of the opinion that an inventor must be a natural person and indicating that they consider this concept to be in line with established legislation and decisions of the Federal Circuit. The refusal of the USPTO to process Dr Thaler’s patent applications, which designated DABUS as the sole inventor, was heard before Judge Leonie Brinkema at the Virgina Eastern District Court. Dr Thaler alleged that the actions of the USPTO were arbitrary, capricious and not in accordance with the law. Judge Brinkema ultimately disagreed with Dr Thaler and ruled in favour of the USPTO echoing the notion that an inventor must be a natural person. It was however noted in the ruling that “there may become 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.” It would thus therefore appear that, in the US at least, the discussion of if AI can constitute inventor status is an ongoing debate that is not yet fully resolved. In the meantime, within the current framework of US patent law, it seems that AI systems should not be considered as able to satisfy requirements of inventorship.

The story is similar in the UK and Europe. Like the USPTO, the UKIPO determined that Dr Thaler’s patent applications failed to comply with the requirements of an inventor indicated in the Patents Act 1977. Questions were raised as to how an applicant could be entitled to a patent right derived from a machine inventor. Ultimately, the UKIPO believed as DABUS was not a person and thus could not be considered an inventor, Dr Thaler lacked entitlement to be granted a patent in respect of the inventions at issue. The applications were thus deemed withdrawn. The decision of the UKIPO was appealed at the High Court where it was found that a patent proprietor must be a legal person, having a legal personality. As, under UK law, the default proprietor of a patent is the inventor, an inventor must also have a legal personality. The machine DABUS, it was ruled, does not have the legal personality required to own and transfer patent rights. Dr Thaler appealed the decision of the High Court to the Court of Appeal where the appeal was dismissed by Arnold LJ, Briss LJ and Laing LJ. The ruling of the Court of Appeal indicated that DABUS is not a person and therefore is not an inventor under UK law. The EPO has likewise rejected the two European patent applications naming DABUS as an inventor on the grounds that an inventor cannot be a machine – an inventor must be a human being. Dr Thaler subsequently appealed to the Board of Appeal. This appeal was recently rejected with the Board of Appeal finding that, under European patent law, an inventor must be a natural person having a legal capacity.

Despite his failures in convincing the EPO, UKIPO and USPTO that the AI system DABUS should be considered an inventor, Dr Thaler has had success in some jurisdictions. In particular, in South Africa Dr Thaler has secured a granted patent derived from the aforementioned International patent application in which DABUS is designated as an inventor. It is noted that in South Africa, no substantive examination of a patent application is conducted however formal requirements, such as designation of inventors, are checked by the patent office. Furthermore, in Australia following an initial refusal of a national phase patent application by IP Australia, Dr Thaler won an appeal held at the Federal Court in which Justice Beach indicated that none of the provisions of Australian patent law exclude an inventor from being a non-human artificial intelligence device or system. In his ruling, Beach J did however clarify that an AI system cannot be designated as the applicant of a patent. With an apparent divergence of opinion from jurisdiction to jurisdiction, it remains to be seen what impact the designation of an AI system as an inventor may have for intellectual property rights. It seems clear however that most patent offices around the world are currently reluctant to accept AI systems as inventors. The designation of a machine as an inventor also raises fundamental questions relating to the concepts of inventive step and sufficiency in relation to patent law.