Dabus creator loses AI inventor patent appeal

Physicist Stephen Thaler has failed in his bid to establish his creativity machine, Dabus, as an inventor under the Patent Act, following the dismissal of his appeal by the English High Court.

In July 2019, a team at the University of Surrey led by Ryan Abbott filed patent applications in multiple jurisdictions that listed the AI application, Dabus, as the sole inventor of a food product and an emergency light.

In December, the UK Intellectual Property Office (IPO) held that it should not be deemed as an inventor according to sections seven and 13 of the Patents Act 1977. In its decision, the IPO also stated “there could be no transfer of Dabus’ rights to Dr Thaler,” because Dabus could not own IP rights. Thaler appealed this decision.

On appeal, Thaler argued that the IPO hearing officer “had prejudged the outcome of the decision” and that he did not receive an “impartial hearing”. He also contended that the hearing officer “had misdirected himself in his approach to construing the relevant legislation dissemination of innovation to the public, as this decision will be down to the owner or developers of the AI machine”.

In a decision handed down on September 21, the High Court upheld the IPO’s decision, agreeing that Dabus could not be considered an inventor. Upon dismissing the appeal, it also ruled that patent rights could not be transferred to Thaler.

Judge Marcus Smith said: “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.”

He added however, that the court had “no desire to be dismissive of Dr Thaler's viewpoint” and warned that “this is an important debate, and as artificial intelligence develops it can only become more so”.

‘Note of caution’ for IPO

In his reasoning, Justice Marcus Smith also offered a "note of caution" on submissions made by the IPO that Thaler's “true complaint is that the law should not be so: that it should recognise some form of personality (or, at least, recognise inventorship) for artificially intelligent machines”.

Furthermore, he added that he was unsure whether the IPO's description of Dr Thaler's contentions can be said to be a correct characterisation. “Dr Thaler expressly disavowed a contention that Dabus was a natural (or legal) person, and focussed instead on the contention that the ‘inventor’ of statute is a legal construct detached from the question of personality. In other words, it was perfectly possible to be an inventor without being a person,” he said.

He concluded, however, that he was conscious that it was not for the courts to legislate or to make policy, stating: “The questions raised by the appellant are undoubtedly interesting: but they are interesting in terms of legal policy regarding artificial intelligence and raise no matter of interest on an appeal.”

In an LSPN Connect session, Abbott, author of “The Reasonable Robot: Artificial Intelligence and the Law”, explained there were likely to be ongoing significant issues around AI inventorship in the patenting landscape, and explored the IP challenges presented by AI.

Speaking to WIPR about this week's judgment, Ryan Abbott said: “We are pleased that the IPO has just launched a consultation to debate, among others, the underlying policy concerns raised by our case. In our opinion, if current patent laws do not protect AI-generated inventions, it is time these laws are reviewed.”

He added: “Alternately, the judgment suggests it would be appropriate for a person to name him or herself as an inventor by virtue of ownership of an inventive machine. We disagree with this approach because it would allow people to take credit for work they haven’t done and devalue human inventorship, and it would not inform the public of the origin of an invention.”

Last month, Thaler sued the United States Patent and Trademark Office in a challenge to the office's rejection of patent applications for inventions created by Dabus.

Following the issues raised by the Dabus project, the IPO launched a consultation on the impact of AI on all areas of the IP system earlier this month.

The main theme of the consultation is whether AI can be considered an “inventor”. At present, no jurisdiction worldwide has recognised AI as an inventor.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox

Today’s top stories

INTA unveils WIPO and Disney keynotes for annual meeting

‘Toy Story 4’ character infringes Evil Knievel IP: suit

Developments in patent venue law in the aftermath of TC Heartland