DABUS ignites debate on AI inventorship

By Nick Li, Alexandra Mangion
Intellectual Property Patents & Trade Marks Technology

In brief 3 min read

The patent offices in the UK and Europe have rejected patent applications naming artificial intelligence as inventors, but this is only the beginning of the debate on AI inventorship.

The case that challenged patent law

We previously reported on patent applications Stephen Thaler filed in the US, EU and UK, relating to AI-generated inventions and designating AI as the inventor (the DABUS applications).

Since then, the Intellectual Property Office of the United Kingdom (the UKIPO) and European Patent Office (EPO) has each refused the DABUS applications. Stephen Thaler named DABUS as inventor on each of the patent applications. He created DABUS and therefore claimed to derive the right to grant of the patents by way of 'ownership of the creativity machine DABUS'. His ownership of the patent was not in issue per se; the issue was whether DABUS could be named as the inventor and be the source from which Mr Thaler's title derived.

The UKIPO and EPO each found that DABUS, being a machine, could hold no rights and could not transfer any rights as the inventor to the applicant as successor in title. Therefore, the applicant did not acquire the right to the grant of the patents. Further, the UKIPO found that DABUS was not a natural person and therefore was unable to be an inventor.

The US Patent and Trade Mark Office (USPTO) has not yet decided the fate of the DABUS applications, instead publishing in late 2019 a request for comments in relation to a list of questions regarding AI patent issues. The submissions that have been published to date indicate a general consensus among stakeholders that the current framework in the US is unlikely to permit AI to be named as an inventor. 

Will AI machines ever be recognised as inventors?

The Artificial Inventor Project, which is behind the DABUS applications, has been advocating consistently for AI to be capable of being named as an inventor.

Different jurisdictions impose different requirements in relation to who/what can be listed as the inventor. A number of jurisdictions justify their definition of inventorship as limited to human or natural persons by referring to the Paris Convention. However, the Paris Convention only provides for the right of an inventor to be named in their respective patent. As such, requirements for the inventor to be a 'natural person' appear to be based on local patent laws in member states.

Recently, the Artificial Inventor Project indicated that it is appealing the EPO and UKIPO decisions. The DABUS applications appear destined for a lengthy course of scrutiny by courts and patent offices.

The World Intellectual Property Office has similarly published an issues paper identifying the challenge of AI inventorship within existing patent frameworks, and is seeking feedback from member states.

AI inventorship has not yet been considered under Australian patent law, which has some marked statutory differences from the UK and EU. Despite this, similar concerns are likely to arise in Australia if the matter comes up for consideration.

For the moment at least, it appears the issue is far from decided.