UK’s DABUS debate chews over sticky inventor issue
On March 2 the UK Supreme Court heard arguments in the case of Thaler (Appellant) v Comptroller-General of Patents, Designs and Trademarks (Respondent). The case concerns DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), an AI system that is alleged to have made two inventions that are the subject of UK patent applications GB1816909.4 and GB1818161.0.
Thaler was the owner of DABUS, and its creator, and set up the system to run to produce the inventions in issue. However the inventions are said to have been made without any creative human input, and Thaler, therefore, stated on the relevant form that “the applicant identified no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS”.
The applications were refused by the UK Intellectual Property Office (IPO) formally, by the comptroller, because DABUS is not a person and so could not be considered an inventor under the relevant sections of the UK Patents Act.
This decision was appealed, first to the England and Wales High Court, then to the Court of Appeal. In the Court of Appeal, the decision was split, with two judges siding with the comptroller and one siding with Thaler, which was convenient as this then facilitated an appeal to the Supreme Court on what is an important issue. The case proceeded on the assumption that DABUS was the creator of the inventions, and did not go into that.
Erudite debate
A video of the Supreme Court hearing is online and easily found, and makes for an interesting listen, particularly the morning session. The language is accessible, and the format is akin to an erudite debate. At previous instances, there had been some exploration of whether “my cat Felix” could be an inventor; at this hearing, it was Michael Mouse who was more in the limelight, of which more later.
The European Patent Office (EPO) had already heard a related case ( J9/20) and had decided against Thaler, noting that they were not aware of any case law that would prevent the user or owner of a device from designating themselves as inventor under European patent law.
The Supreme Court appeared to sympathise with this and later suggested that Thaler had taken what might be seen as a rather intransigent position as to how they had framed their application and in consequence had run into a brick wall.
Thaler’s team on the other hand considered that he was merely trying to answer the question on the form in an honest manner, and another of the Justices commented that if a question includes an incorrect assumption (ie the IPO form assuming that the inventor is human) then it is a valid answer to point this out.
However, if DABUS is the inventor this raises questions of whether an invention, intangible information, can be property and if so how it is transferred to Thaler; or is it the right to apply for a patent that is transferred?
Why didn’t Thaler name himself as inventor?
It seems that there was nothing to stop Thaler from naming himself as inventor as the owner and user of DABUS, and apparently, there is an application like this pending at the EPO. In UK law the inventor is the “actual deviser” of the invention, and Thaler could be understood to be the natural person who came up with the inventive concept, by using a machine that produced it for him.
Thaler’s team demurred, commenting that there could be instances where many humans were involved, or where the nexus with any particular natural person was remote. They said that Thaler would only be the deemed or pretended deviser, and this would have ramifications for other sections of the Act.
The IPO operates within a framework where it does not look behind who is declared to them to be the inventor; if another person is vexed because they should have been named instead then proceedings can be brought to correct this.
Thus if a patent application named Michael Mouse as an inventor the IPO would not be able to refuse the application because of that. However, if the relevant form explicitly stated that the inventor is the fictitious character “Micky Mouse” then the situation would be different.
If Thaler had been named as inventor the comptroller would not have had power to object. The specification could include a statement explaining the origin of the invention, which would be published when the specification was. Thaler’s team was unhappy that this would still not reflect the true state of affairs.
Some other interesting points were made by counsel for the comptroller. If AI inventors were permitted, one could imagine a field where the majority of the inventions had AI inventors. Whether or not an invention is obvious is a question directed to the notional skilled person, who should then be an AI system.
But what does it mean for something to be obvious to a machine? This affects the central tenets of the patent system.
It’s also interesting to note what happens in the US, where an AI system cannot be named as an inventor ( CAFC 2021-2347). In the US deliberately making a false declaration of inventorship is punishable by imprisonment; would the discrepancy required by a different UK approach stop people filing in the UK? An internationally coordinated approach is required, argued the comptroller.
It will be interesting to read the final decision. It seems likely that the UK Supreme Court will decide, as the US and EPO have, that an inventor must be a human and cannot be an AI system—at least for now.
Mike Williams is a partner at Marks & Clerk. He can be contacted at: mwilliams@marks-clerk.com
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