An Update Regarding the DABUS Debate
At the forefront of this debate is the Device for the Autonomous Bootstrapping of Unified Sentience (DABUS). DABUS is an artificial intelligence (AI) system created by Dr. Stephen Thaler that, according to Dr. Thaler, is capable of conceiving inventive subject matter.
Previously, Dr. Thaler credited DABUS as the creative mind behind two inventions, a fractal container and a neural flame, and filed respective UK, European, US and International patent applications on the point. In these patent applications, Dr. Thaler designated the AI entity DABUS as the sole inventor.
Dr. Thaler’s decision to designate DABUS as the sole inventor in respect of these patent applications has been met with resistance at a variety of patent offices around the world. The USPTO has previously refused one of Dr. Thaler’s US patent applications on the grounds that DABUS is not a natural person. The Decision of the USPTO was subsequently supported by a decision of the Virginia Eastern District Court. Dr. Thaler has since challenged the decisions of the USPTO and Virginia Court at the Federal Circuit and has attempted to argue that an “individual”, which is the wording the US Patent Act specifies as a criteria for an inventor, can include an AI entity. Dr Thaler however was again met with disappointment following the Circuit’s ruling that an individual is a natural person and thus the Patent Act requires an inventor to be a human being. Dr. Thaler has attempted have the case reheard arguing that the decision contradicts legal precedent and the dictionary definition of the term “individual” however the Circuit rejected the request for a rehearing. Dr. Thaler’s attorney has since indicated that Dr. Thaler intends to appeal the decision of the Federal Circuit at the US Supreme Court and has stated that Dr. Thaler’s interpretation of the requirements of an inventor are the most consistent with the Patents Act and is the interpretation that promotes innovation.
In the UK, the UKIPO previously rejected Dr. Thaler’s corresponding UK patent applications on the basis that AI entity DABUS cannot be designated as inventor. Ultimately, the UKIPO considered that as DABUS was not a person and thus could not be considered to be an inventor, Dr. Thaler lacked entitlement to be granted a patent based on the inventions claimed in the patent applications. Dr. Thaler since appealed to the High Court. The High Court however maintained the decision of the UKIPO indicating that a patent proprietor must be a legal person having a legal personality and, as an inventor is the default proprietor of a patent under UK law, an inventor must also be a legal person having a legal personality. It was ruled that DABUS, as a machine, does not have a legal personality. Dr. Thaler then elected to take the matter to the Court of Appeal. The Court of Appeal maintained the decision of the High Court, however Lord Justice Briss, one of the three judges sat in the Court of Appeal, expressed a dissenting opinion that the filing requirements of the patent application had been met due to Dr. Thaler’s genuine belief the DABUS is the inventor. LJ Briss indicated that the patent application should have progressed to examination and, if allowable, to grant. It is noted however that LJ Briss agreed that, under the Patents Act 1977, an inventor is a natural person that cannot be an AI. LJ Briss’ opinion appears to be based upon the fact that he considers the purpose of Section 13(2) of the Patents Act 1977 is to create a public record regarding the inventor and how the applicant derives the right to a patent from the inventor, not to evaluate the validity of the designated inventor. Dr. Thaler plans to take this matter to the UK Supreme Court and will be heard in March 2023.
It is worth noting that the UK government has recently undertaken a consultation on AI and IP and has stated that “There is no evidence that UK patent law is currently inappropriate to protect inventions made using AI. We are also sensitive to concerns that unilateral change now, risks being counterproductive. So, we will advance international discussion so that inventions devised by AI are appropriately protected in the future.”
In Australia, Dr. Thaler’s patent application was initially rejected by IP Australia. However, upon review, the Federal Court overturned the decision of IP Australia holding that none of the provisions of Australian patent law exclude an inventor from being a non-human artificial device or system. However, unfortunately for Dr. Thaler, the Full Court of the Federal Court subsequently ruled in favour of IP Australia and indicated the origin of entitlement to the grant of a patent lies in human endeavour. The Federal Court ultimately considered that under the legislation of Australian patent law, it is only possible for a natural person to be considered as an inventor. Dr. Thaler’s subsequent request to appeal the decision of the Federal Court was dismissed by the Australian High Court.
It appears that despite the initial success of Dr. Thaler in Australia alongside his granted South African patent (which lists DABUS as the inventor), the legal authorities are not currently minded to accept AI entities as inventors. It is noted that in South Africa no substantive examination of a patent application is undertaken, however formal details are checked. It thus still remains unclear if the current legal framework in many key jurisdictions around the world would support non-human inventors. It is noted that Dr Thaler is experiencing significant resistance with respect to his patent applications specifically because he has elected to designate the AI entity DABUS as inventor. Inventions conceived by non-human entities are typically protectable by designating a human being as the inventor. Dr Thaler could, for example, have designated himself, as the creator of DABUS, as the inventor.