The debate on artificial intelligence and intellectual property is in the limelight thanks to the recent news from jurisdictions such as Australia and South Africa concerning Stephen Thaler’s patent application for an AI-generated invention. Thaler invented the AI machine known as ‘Device for Autonomous Bootstrapping of Unified Sentience’ (DABUS) to generate inventions. He was featured in Managing IP’s Top 50 most influential people in IP 2020.
With the support of technology law scholar Ryan Abbott and IP firms, Thaler has filed international and national patent applications which mentioned DABUS as an inventor. His applications indeed challenge the orthodox practice or expectation that only humans can be named as inventors in a patent application.
Some patent offices have looked at Thaler's application. This article summarises the latest news about the applications and the firms involved, according to the information published by Abbott on LinkedIn and the Artificial Inventor Project website. We intend to update this article as soon as we receive new information.
The Australian Patent Office refused to proceed with the application. Thaler appealed to the Federal Court and succeeded. The court handed down its judgment on July 30. Justice Beach analysed the relevant provisions of the Patent Act 1990 and concluded: “[N]one of these provisions exclude an inventor from being a non-human artificial intelligence device or system.”
Summarising his decision, Beach J said: “[A]n inventor as recognised under the Act can be an artificial intelligence system or device. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent. So to hold is consistent with the reality of the current technology. It is consistent with the Act. And it is consistent with promoting innovation.”
See a copy of the judgment here (Thaler v Commissioner of Patents  FCA 879). As far as we are aware, this is the first court judgment allowing an AI machine to be named as an inventor in a patent application.
IP Australia announced on August 30 2021 that it will appeal. In its press release, the IP Office noted: "The decision to appeal does not represent a policy position by the Australian Government on whether AI should or could ever be considered an inventor on a patent application. The Government is committed to ensuring that all Australians benefit from emerging AI technology, through its June 2021 AI action plan."
On April 13 2022, the Full Court of the Federal Court ruled in favour of the Commission of Patents (IP Australia). In a unanimous decision, the justices agreed that "the origin of entitlement to the grant of a patent lies in human endeavour" and concluded: "Accordingly, having regard to the statutory language, structure and history of the Patents Act, and the policy objectives underlying the legislative scheme, we respectfully disagree with the conclusion reached by the primary judge. The Deputy Commissioner was correct to reach the conclusion that, by naming DABUS as the inventor, the application did not comply with reg 3.2C(2)(aa)."
The justices, at paragraphs  - , raised some issues for policymakers to consider when dealing with the recognition of AI machines in the patent system. Read the judgment here.
Thaler's legal representatives confirmed, on September 21, 2022, that Thaler has applied for a special leave to appeal the Full Court's decision to the High Court. The firm said the High Court is likely to hear the matter in November 2022.
Federal Court: Richard Hamer (Patent Star) and Lauren John (Rising Star) of Allens
Patent Office: Davies Collison Cave
The EPO rejected the two European patent applications made by Thaler. The Office held that the European Patent Convention (EPC) requires the inventor to be a natural person and an AI machine cannot assign patent rights to the applicant. Read a summary of its decision here.
Thaler appealed. The EPO Legal Board of Appeal (BoA) revealed its preliminary view on June 21 2021 (see here and here). The Board said: “In the preliminary view of the Board, under the EPC the inventor designated for the purpose of a patent application must be a person having legal capacity.”
Robert Jehan of Williams Powell
The German Patent Office also refused to allow Thaler's applications. Thaler's team took the matter to the Federal Patent Court. On November 11 2021, the court ruled that AI-generated inventions are patentable but a natural person must be named as the inventor. To get around the current legal impediment, the court said the applicant can state that an AI machine was involved. Read a summary of the court's decision here and here or here.
In an interview with Managing IP, Thaler's legal representative Markus Rieck explained: “The court did not say who the true inventor is, their decision dealt with how you have to fill out the form in order not to get the application rejected.” Read the article here.
Markus Rieck of Fuchs IP
Malte Köllner of Köllner & Partner
The South African IP Office (the Companies and Intellectual Property Commission) granted Thaler’s application. This was confirmed in its July patent journal.
It should be noted that South Africa operates a depository system: the patent office only checks for basic formal requirements. South Africa’s Patent Act 1978 provides several grounds for patent revocation. It remains to be seen whether Thaler’s patent will be challenged.
Erik van der Vyver (Patent Star) and Stephen Middleton (Rising Star) of Von Seidels.
The UK IPO refused to proceed with Thaler's applications, arguing that he did not fulfil the statutory requirements concerning inventorship and entitlement. Thaler appealed to the High Court.
High Court judgment
Mr Justice Smith analysed the law and concluded that “the provisions of the Patents Act 1977 are extremely clear” that an inventor must be a person. Smith J therefore dismissed the appeal. In his decision, the judge said: “[The] court can only construe legislation and cannot itself legislate, no matter how great the policy need.”
Smith J also noted in his postscript: “[I] would wish to make clear that I in no way regard the argument that the owner/controller of an artificially intelligent machine is the "actual deviser of the invention" as an improper one. Whether the argument succeeds or not is a different question and not one for this appeal: but it would be wrong to regard this judgment as discouraging an applicant from at least advancing the contention, if so advised.”
Thaler appealed to the Court of Appeal.
Court of Appeal judgment
The matter came before Arnold, Laing, and Birss LJJ (watch the proceedings here and here). In a split judgment handed down by Birss, on September 21, the appeal was dismissed. First, on the central question, the three judges agreed that an inventor must be a person. They disagreed on whether Thaler satisfied the requirements of section 13 of the Act and the consequence of non-compliance.
Birss analysed the law and legislative history (citing the Banks Committee report on the patent system) and held that Thaler satisfied the requirements. Birss said the applications should not be deemed withdrawn "simply because [his] statement under s13(2)(a) does not identify any person who is the inventor". He ruled that the IPO is not required to examine inventorship and patent entitlement. He also noted that patents can be granted for inventions created by AI. "The fact that the creator of the inventions in this case was a machine is no impediment to patents being granted to this applicant," Birss said.
Arnold and Laing agreed with Birss that the law does not require the IPO to conduct factual or legal investigations about an application. Laing said: "[S]ection 13 is not a mechanism which requires the Comptroller to investigate the factual or legal merits of an application, or, it follows, to endorse the validity of the application (for example, judgment, paragraphs 68, 71 and 74)."
They, however, disagreed that Thaler fulfilled the requirements, primarily relying on the consensus that the current law does not recognise an AI machine as an inventor. At the start of his judgment, Arnold said: "[W]e must apply the law as it presently stands: this is not an occasion for debating what the law ought to be." On entitlement, he noted:"[A]lthough Dr Thaler contends that he is entitled to apply for patents in respect of the inventions as the owner of DABUS by virtue of a rule of law, there is no such rule."
Arnold concluded by agreeing with the IPO's decision to treat the applications as withdrawn. "[G]iven that the applications do not comply with two important statutory requirements, it would not be right in my view to permit them to proceed, particularly since the statute provides no other mechanism for addressing the non-compliance."
It remains to be seen whether Thaler and his team will take this to the UK Supreme Court. Abbott spoke to Managing IP about the decision here.
Robert Jehan of Williams Powell and Ryan Abbott of Brown Neri Smith Khan
UK government’s response
The UK IPO has published the government’s response to its consultation on AI and IP here and here. On patents, the government concluded: “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.”
Our colleagues at Managing IP reported that Thaler's representatives are seeking permission to bring their appeal before the UK Supreme Court. It remains to be seen whether the court will agree to hear their appeal.
The USPTO also refused to allow the application, stating that legislation and Federal Circuit case law on inventorship “require that an inventor must be a natural person”. Thaler brought an action before the Virginia Eastern District Court. On September 2, Judge Leonie Brinkema ruled in favour of the USPTO.
In her judgment, Judge Brinkema said:[T]he USPTO's interpretation of the Patent Act was carefully considered and was consistent with the Patent Act's language and the caselaw... Accordingly, the USPTO's interpretation that an "inventor" must be a natural person is entitled to deference. Even if no deference were due, the USPTO's conclusion is correct under the law."
Brinkema also noted that it is up to legislators to expand the scope of inventorship. She explained:"[P]olicy arguments do not override the overwhelming evidence that Congress intended to limit the definition of "inventor" to natural persons. As technology evolves, there may come 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."
Reacting to the decision on LinkedIn, Abbott said: "The EDVA decision will be appealed to the Court of Appeals for the Federal Circuit." The Federal Circuit heard Thaler's appeal in June 2022 and handed down its judgment on August 5 2022 (see here). In summary, the court rejected Thaler's arguments and concluded: "[T]here is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings... Congress has determined that only a natural person can be an inventor, so AI cannot be."
Abbott also plans to appeal the Federal Circuit's decision. He said: "The court adopted a narrow and textualist approach to resolving the key issues in this case that ignored the purpose of the Patent Act and the outcome that AI-generated inventions are now unpatentable in the United States. That is an outcome with real negative social consequences. We do plan to appeal."
USPTO: Reuven Mouallem of Flashpoint IP
Court: Geoffrey Alex Neri and Ryan Abbott of Brown Neri Smith & Khan
*This article was first published in August 2021. We will amend it as soon as we receive further relevant updates.