Computers and the features they offer permeate every aspect of modern life. Computers are on your desk, computers are in your car, and you may be reading this article on a device that talks to the watch on your wrist, the router in the other room, and a variety of other smart devices. in the building.
Computers and computing power are also part of the invention generation process and, for example, make it possible to analyze and process huge volumes of data at the touch of a button. The increasing use of artificial intelligence and machine learning techniques is also helping to determine relationships within that data that would be beyond the capabilities of a person or team analyzing the data in a more traditional way.
In some cases, it can be difficult to determine exactly where an invention came from: does the claimed invention describe a relationship that has been “determined” by the computer / AI? Is AI the inventor or is the inventor the research team that designed and implemented the conditions for the invention to be generated?
When filing a patent application, the above question is often answered by designating the person (s) involved in the project as the inventor or inventors of the claimed invention.
Some people claim, however, that AI could be the inventor.
Such a person is Dr Stephen Thaler, President and CEO of Imagination Engines Inc, who invented a machine * known as DABUS (the “Device for Autonomous Bootstrapping of Unified Sentience”) which, according to Thaler, generated its own inventions. Thaler with the help of Professor Ryan Abbott, professor of law and health sciences at the University of Surrey, has filed several patent applications in various jurisdictions around the world to test and challenge the accepted view that only a person can be an inventor.
Starting in alphabetical order, we start with a territory in which Thaler has had some success. While the Australian Patent Office said the patent application did not comply with Australian patent regulations, the case was appealed by Thaler to the Federal Court where Judge Beach ruled that there was nothing in the provisions of Australian patent law that prohibited an inventor from being a non-human. This decision to be appealed by IP Australia, as outlined in its August report Press release.
In Europe, the two patent applications (EP3564144 and EP3563896) were refused by the EPO after oral proceedings in November 2019 on the grounds that the European Patent Convention requires an inventor to be a human being.
The EPO’s decision is appealed against to the board of appeal (J0008 / 20 and J0009 / 21). In its preliminary opinions (here and here), the Board of Appeal stated that, in its opinion, an inventor needs a person with legal capacity. The oral proceedings of the appeal are scheduled for December 21, 2021 **
Besides the Declaration of designation of the inventor on EP DABUS cases is not your typical statement and is worth reading. It’s a full-fledged trial!
The Thaler patent was issued in July 2021 by the South African Intellectual Property Office. However, it is worth noting the differences between the patent system in South Africa and that of the other countries on this list. South Africa does not review applications and the Intellectual Property Office only checks formal requirements (i.e. as long as someone or something has been listed in the ‘inventor’ box, the patent application would be processed).
UKIPO refused Thaler’s two patent applications (GB2574909 and GB2575131) on the grounds that the requirements of UK Patents Act were not met. Thaler appealed to the High Court which confirmed that the provisions of the Patent Act were clear and that the inventor had to be a person. Justice Smith pointed out, however, that the ruling was based on the interpretation of UK law and was not about the broader political debate.
Thaler appealed the High Court’s decision to the Court of Appeal which in a split decision, dismissed the appeal. The appeal case was heard by Arnold, Laing and Birss LJJ. The judges agreed that under UK law an inventor had to be a person, but disagreed that Thaler had met the requirements of patent law, with Birss arguing that the applications did not should not be withdrawn simply because the declaration under Article 13 (2) (a) [the requirement to file a statement identifying the inventor] “Does not identify the person who is the inventor”.
We understand Thaler is seeking leave to appeal to the UK Supreme Court.
The USPTO denied the request on the grounds that “the inventor must be a natural person”. An appeal was lodged with the Eastern District Court of Virginia and the decision in which the court found that the USPTO’s interpretation of the Patent Act was consistent with the language of the statute and associated case law. Thaler is now appealing the decision to the Federal Circuit Court of Appeal.
The Thaler cases still have a long way to go before final decisions are taken in the various jurisdictions where patent applications have been filed. Whether one views the associated claims and remedies as some kind of publicity stunt or as a real challenge to the object of the inventory being determined, they have had the effect of raising the profile of this issue.