DABUS & AUKUS: A Tale of Three Approaches to the Question of Whether an Invention Created by a Machine Using Artificial Intelligence is Patentable

A number of countries have now issued decisions on whether a patent can be granted to Dr. Stephen Thaler for an invention made by a machine named DABUS.

In response to a request by the United Kingdom Intellectual Property Office to name the inventor of the invention and indicate the derivation of his right to be granted a patent Dr. Thaler responded:

A machine called “DABUS” conceived of the present invention:

“The invention disclosed and claimed in this British patent application was generated by a specific machine called “DABUS”, which is a type of connectionist artificial intelligence. Such systems contain 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. This first network generates novel ideas in response to self-perturbations of connection weights between neurons and component neural nets therein. 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. The critic net also generates an effective response that in turn injects/retracts perturbations to selectively form and ripen ideas having the most novelty, utility, or value.”

“In the case of the present invention, the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient. If the teaching had been given to a person, that person would meet inventorship criteria as inventor.”

“In some instances of machine invention, a natural person might qualify as an inventor by virtue of having exhibited inventive skill in developing a program to solve a particular problem, or by skillfully selecting data to provide to a machine, or by identifying the output of a machine as inventive. However, in the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine rather than a person identified the novelty and salience of the present invention.”

“A detailed description of how DABUS and a Creativity Machine functions is available in, among others, the following US patent publications: 5,659,666; 7,454,388 B2; and 2015/0379394 A1.”

“Patent law also protects the moral rights of human inventors and acknowledging machines as inventors would facilitate this function. At present, individuals are claiming inventorship of autonomous machine inventions under circumstances in which those persons have not functioned as inventors. This is fundamentally wrong and it weakens moral justifications for patents by allowing individuals to take credit for the work of machines. It is not unfair to machines who have no interest in being acknowledged, but it is unfair to other human inventors because it devalues their accomplishments by altering and diminishing the meaning of inventorship. This could equate the hard work of creative geniuses with those simply asking a machine to solve a problem or submitting a machine’s output. By contrast, acknowledging machines as inventors would also acknowledge the work of a machine’s creators.”

“Machines should not own patents. They do not have legal personality or independent rights, and cannot own property.”

“The machine’s owner should be the default owner of any intellectual property it produces and any benefits that would otherwise subsist in a natural person owner. This is most consistent with current ownership norms surrounding personal property (including both machines and patents).”

The claimed invention related to containers, devices and methods for attracting enhanced attention using convex and concave fractal elements.

United Kingdom

The UKIPO noted that Section 13 of the UK Patents Act states that failure to provide the Patent Office with a statement “identifying the person or persons the applicant believes to be the inventor or inventors” and “where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent” results in the application being “taken to be withdrawn”.

In the view of the UKIPO, DABUS was not a person as envisaged by the statute and even if it were, it did not have the legal capacity to assign its rights to the named applicant Dr. Thaler and there was no other basis in law for allowing transfer of ownership of the invention from the inventor to the owner of the machine in this case, as the inventor (DABUS) itself could not hold property.

This reasoning was essentially followed in the first level of appeal to Marcus Smith J in the Patents Court, noting in particular Section 7(b) of the Patents Act which states:

patent for an invention may be granted (a) primarily to the inventor or joint inventors; (b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom; (c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;

and to no other person. (emphasis added by author)

Dr. Thaler had specifically stated that he was not the inventor and no law or agreement transferred rights from the named inventor to him and so no patent could be granted to him for DABUS’s invention.

In the Court of Appeal, all three judges on the panel gave opinions:

Birss LJ (a former patent barrister and Patents Court Judge and now deputy head of Civil Justice where he is working on ways of improving use of IT in litigation, including using AI to administer law value cases where justice needs to be done but the parties cannot afford a lawyer and the state cannot afford a judge) would have allowed the application to proceed.  He reasoned that the Patent Office had been wrong to deem the application withdrawn.  After noting that the relevant provision of the UK Patent Act were not among those that the Act required to be construed to comply with the European Patent Convention and so earlier English law and the legislative history of the current UK Act remained relevant, Birss LJ concluded that under the current act the term “inventor” meant the person who actually devised the invention. He continued:

“Machines are not persons. The fact that machines can now create inventions, which is what Dr. Thaler says happened in this case, would not mean that machines are inventors within the meaning of the Act. Assuming the machine is the entity which actually created these inventions, it has no right to be mentioned as the inventor and no right to employee’s compensation under s39 (which no doubt it never had anyway).”

However, this was not dispositive of the question of whether the application should be taken as having been withdrawn.  Dr. Thaler had given information as to who he believed to be the inventor (DABUS).  Birss LJ noted:

“There is more than a hint in this case of the idea that if only Dr. Thaler was not such an obsessive and, instead of calling DABUS the inventor, he named himself and then none of these problems would arise. However, since inventors can waive their right to be mentioned under section 24(3), even if the Comptroller suspects that Dr. Thaler is really the inventor, Dr Thaler has clearly waived whatever right he may have had to be mentioned and that should be the end of that.”

The fact that DABUS could not properly be named as an inventor did not mean that the application should be withdrawn, it simply meant that no inventor could be named on the patent.

On the question of whether Dr. Thaler could apply for a patent under these circumstances, Birss LJ noted that Dr. Thaler had provided information as to why he had rights to the invention and these had not been challenged. He commented:

“It is now clear what it is that Dr. Thaler advances to the Comptroller as the derivation of his right to be granted the patent. He contends that he derives his right under section 7(2)(b) because he created, owns and operated DABUS and there is a rule of law whereby the owner and operator of a machine which creates inventions is entitled to the right to apply for and be granted a patent for an invention created by that machine.”

“In my judgment Dr. Thaler has complied with his legal obligations under section 13 (2)(b) as well. He has given an indication of the derivation of his right to be granted the patent. The claim to derivation will be clear on the register. The assertion, if correct, is not incomplete. It would mean that Dr. Thaler does indeed have the right to apply for and be granted the patent. When the application is published then if someone thinks he has the right to patents for these inventions he would see how it is that Dr. Thaler’s claim is put. If he thought he had a better right than Dr. Thaler he would be able to come to the Comptroller in proceedings under section 8 (or after grant under section 37) and, if he can, establish that he should be granted the patent instead.”

It is therefore unnecessary to examine whether there is indeed such a rule of law.

In Birss LJ’s view the application should therefore have been allowed to proceed.

Arnold LJ, another former patent barrister and Patents Court judge, disagreed.  He agreed with Birss LJ that the inventor had to be a person.  That being the case, however, Dr. Thaler could not have the right to apply for a patent on Dabus’s invention.  In his opinion:

“There is no rule of law that a new intangible produced by existing tangible property is the property of the owner of the tangible property, as Dr. Thaler contends, and certainly no rule that the property contemplated by section 7(2)(b) in an invention created by a machine is owned by the owner of the machine. Accordingly, the hearing officer and the judge were correct to hold that Dr. Thaler is not entitled to apply for patents in respect of the inventions given the premise that DABUS made the inventions.”

To reach this conclusion, Arnold LJ referred to the 1766 edition of Blackstone’s Commentaries on the Laws of England, and its discussion of whether a property right could pass by accession rather than specific assignment.  He concluded that this doctrine only applied to tangible rights and because DABUS did not have any legal “paternity right” to the invention it could not have transferred such a right to Dr. Thaler.

Arnold J noted:

“Dr. Thaler did not identify the person or persons whom he believes to be the inventor or inventors” as required by section 13(2)(a). On the contrary, he deliberately identified a non-person as the inventor. The fact that he may genuinely have believed that DABUS was the inventor is neither here nor there. The answer he gave to the question was a legal impossibility.”

“Nor did Dr. Thaler identify “the derivation of his right…to be granted the patent”. He simply asserted that it was sufficient that he owned DABUS. As a matter of law, that is incorrect.”

Consequently, the UKIPO had been correct to deem the application as having been withdrawn for failure to comply.

The only judge on the panel without patent experience was Elisabeth Laing LJ.  In her view when the current 1977 version of the Patent Act was enacted, Parliament did not have in mind “thinking machines… capable of devising inventions” and that for patents to be granted on such inventions, the Act would need to be amended.  Moreover, in her view, identifying a non-person as the entity who the applicant believed to be the inventor did not comply with the requirement to name “a person” as the inventor.  She therefore agreed with Arnold LJ that the application should be taken as having been withdrawn.

 

United States

The question of whether only humans could be accepted as inventors under the Patent Act was considered in Thaler v. Hirshfeld ¹.  The court held that non-humans could not.

Firstly, deference should be given to the USPTO’s determination that an inventor had to be human because the Federal Circuit had previously held that only natural persons (rather than corporate entities) could be inventors and case law established conception to be a key to inventorship and this involved a mental act that could only be performed by a natural person.  The Supreme Court had held that Skidmore deference ² should be “given to an agency interpretation of the statute that it administers if the agency has conducted a careful analysis of the statutory issue, if the agency’s position has been consistent and reflects an agency-wide policy, and if the agency’s position constitutes a reasonable conclusion as to the proper construction of the statute, even if we might not have adopted that construction without the benefit of the agency’s analysis.” This was the case here.

Secondly, even if no deference were given to the USPTO’s view, the statute requires each individual who is named as an inventor shall execute an oath or declaration. In 2011, the America Invents Act specifically added 35 USC 100(f) to the statute to define “inventor” as “the individual who invented or discovered the subject matter of the invention”. In 2012, in Mohamad v. Palestinian Authority ³ the Supreme Court conducted a statutory construction analysis regarding Congress’s use of the term “individual” in the Torture Victim Protection Act (“TVPA”), ultimately concluding that “the ordinary meaning of the word, fortified by its statutory context,” referred to a “natural person”.

In the case of the Patents Act, this was consistent with the requirement that an inventor must make a declaration that he or she believes that he or she is the original inventor of the invention claimed”. The court noted “by using personal pronouns such as ‘himself’ or ‘herself” and the verb ‘believes’ in adjacent terms modifying ‘individual’, Congress was clearly referring to a natural person”.  As to the appellants argument that the statutes relied upon by the USPTO were passed long before AI-generated inventions were a reality and that if Congress had contemplated this artificial intelligence issue, it would have included artificial intelligence machines within the definition of “inventors”, the judge simply pointed out that “Congress defined an ‘inventor’ as an ‘individual’ through the America Invents Act in 2011, when artificial intelligence was already in existence.”

 

Australia

In Australia in Thaler v. Commissioner of Patents, Beach J sitting in the Federal Court of Australia allowed an appeal by Dr. Thaler against a decision by the Australian Intellectual Property Office that Dr. Thaler’s application had lapsed for failure to name an inventor as required by the relevant rules.  The AIPO had reasoned that an artificial intelligence system could not be an inventor because the relevant section of the Australian Patent Act was “not capable of sensible operation in the situation where an inventor would be an artificial intelligence machine as it is not possible to identify a person who could be granted a patent”.

Beach J considered this view as confusing the question of ownership and control of a patentable invention including who can be a patentee, on the one hand, with the question of who can be an inventor, on the other hand. Only a human or other legal person can be an owner, controller or patentee. … But it is a fallacy to argue from this that an inventor can only be a human. An inventor may be an artificial intelligence system, but in such a circumstance could not be the owner, controller or patentee of the patentable invention.  He went on:

“much of the Commissioner’s argument descended into dictionary definitions of “inventor”. But more is required of me than mere resort to old millennium usages of that word. If words are only “pictures of ideas upon paper” (Dodson v Grew (1767) Wilm 272 at 278; 97 ER 106 at 108 per Wilmot CJ) and if, as Holmes J described it, they are not “crystal[s], transparent and unchanged, [but] the skin of a living thought and may vary greatly in colour and content according to the circumstances and the time in which [they] are used” (Towne v Eisner, 245 US 418, 425 (1918)), I need to grapple with the underlying idea, recognising the evolving nature of patentable inventions and their creators.”

The Act contains no definition of “inventor” and the Australian Interpretation Act defines a person as including “a body politic or corporate as well as an individual”.

Beach J noted that the Australian definition of what is patentable still refers back to the definition in the 1623 English Statute of Monopolies as being a “manner of manufacture” and went on:

“in considering the scheme of the Act, it has been said that a widening conception of ‘manner of manufacture’ is a necessary feature of the development of patent law in the twentieth and twenty-first centuries as scientific discoveries inspire new technologies (D’Arcy v Myriad Genetics Inc. (2015) 258 CLR 334 at [18] per French CJ, Kiefel, Bell and Keane JJ). I see no reason why the concept of ‘inventor’ should not also be seen in an analogously flexible and evolutionary way. After all the expressions ‘manner of [new] manufacture’ and ‘inventor’ derive from the 21 Ja 1 c 3 (Statute of Monopolies) 1623 (Imp) section 6. There is a synergy if not a symmetry in both being flexibly treated. Indeed, it makes little sense to be flexible about one and not the other. Tension is created if you give flexibility to ‘manner of manufacture’ and then restrict ‘inventor’. You would be recognizing an otherwise patentable invention and then saying that as there is no inventor it cannot be patented.”

As to whether the AIPO had been correct to rely on dictionary definitions to conclude that an inventor had to be human, Beach J. noted:

“in terms of agent nouns, the word ‘inventor’, like ‘computer’, is one that might originally have been used only to describe persons, when only humans could make inventions, but can now aptly be used to describe machines which can carry out the same function.”

Furthermore, it was improper to treat dictionary definitions as exclusive legal definitions. Dictionaries frequently gave multiple definitions of the same word.

Nor did the requirement that an invention required an inventive step or the requirements of the PCT, this being a PCT application in Australia, preclude the inventor from being a non-human.

Finally, Beach J turned to the AIPO’s argument that because Section 15 of the Australian Act required that a patent could only be granted to a legal entity, it was proper to treat the application as having lapsed if no such proper party to whom a patent could be granted was identified early in the prosecution of the application.  Beach J considered it premature to reach a conclusion on this issue, but noted that Section 15(1) stated:

“a patent for an invention may only be granted to a person who:

(a)        is the inventor; or

(b)        would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

(c)        derives title to the invention from the inventor or a person mentioned in paragraph (b); or

(d)       is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”

In the judge’s view, Dr. Thaler could potentially fall within s15(1)(b).  Dr. Thaler is the owner, programmer and operator of DABUS, the artificial intelligence system that made the invention; in that sense the invention was made for him.  On established principles of property law, he is the owner of the invention.  In that respect, the ownership of the work of the artificial intelligence system is analogous to ownership of the progeny of animals or the treatment of fruit or crops produced by the labour and expense of the occupier of the land (fructus industrialis), which are treated as chattels with separate existence to the land.

Furthermore, in the judge’s view, Dr. Thaler prima facie falls within s 15(1)(c) because he has derived title to the invention from the inventor, DABUS. He noted:

“Now whilst DABUS, as an artificial intelligence system, is not a legal person and cannot legally assign the invention, it does not follow that it is not possible to derive title from DABUS.  The language of s 15(1)(c) recognises that the rights of a person who derives title to the invention from an inventor extend beyond assignments to encompass other means by which an interest may be conferred.”

“In my view, Dr. Thaler, as the owner and controller of DABUS, would own any inventions made by DABUS, when they came into his possession.  In this case, Dr. Thaler apparently obtained possession of the invention through and from DABUS.  And as a consequence of his possession of the invention, combined with his ownership and control of DABUS, he prima facie obtained title to the invention.  By deriving possession of the invention from DABUS, Dr Thaler prima facie derived title.  In this respect, title can be derived from the inventor notwithstanding that it vests ab initio other than in the inventor.  That is, there is no need for the inventor ever to have owned the invention, and there is no need for title to be derived by an assignment.”

Beach J therefore concluded that the AIPO had been wrong to conclude that the application had lapsed.

The AIPO has filed an appeal to the High Court of Australia.

Conclusion

It is ironic that in comparing the Australian and U.S decisions an Australian judge found that a law enacted in 1623 helped to reach a conclusion that inventions made by a machine using artificial intelligence could be eligible for patent protection whereas a 2011 amendment to U.S. patent law contributed to the judge concluding that inventions made by such machines were not patentable.  This brings back memories of how the Australian courts used the same 1623 statute to effect a significant broadening of the types of inventions that were patentable in the decision in NRDC’s Application.⁴

In comparing the English and Australian decisions it should be noted that the current U.K. law contains no provision corresponding to Section 15(1)(c) of the Australian law providing for acquisition of rights by “derivation” which facilitated Beach J., reaching the decision that he did.

Although the general law in all three jurisdictions recognizes that the word “person” when used in a statute does not necessarily mean a human being, for example corporations can be recognized as “persons”, for such an interpretation to be applied, there needs to be something about the way in which the term is used to make it clear that the term is not being limited to humans in the statute under consideration.  Neither the U.S. nor U.K. patent statutes contained language permitting such a broader interpretation.  The E.U. has issued studies on the general question of whether robots should be afforded some form of legal personality similar to that given to corporations which, depending on whether and if so how such a concept is implemented could provide a model of a way in which inventions made by use of machines using artificial intelligence could be patented in countries lacking the flexibility afforded to Australia by its retention of a venerable definition of what constitutes “invention” and hence “inventor”.  Otherwise it seems that specific amendment to patent laws may be required if it is deemed desirable by policy makers that inventions of this type should be patented.